Appeal No. 2004-0109
Application 09/324,549
in this art, pointing in this respect to specific examples of such alloys “actually made” or
“actually treated” in the references (brief, pages 6, 8-9 and 9-10).
We do not agree with appellants’ position because, as pointed out by the examiner
(answer, pages 4-5), it is well settled that a reference is considered for all of the specific
teachings thereof as well as the inferences one of ordinary skill in this art would have reasonably
been expected to draw therefrom, and not merely from the limited or working examples. See
generally, Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846
(Fed. Cir. 1989), quoting In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976)
(“But in a section 103 inquiry, ‘the fact that a specific [embodiment] is taught to be preferred is
not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be
considered.’”). Indeed, each of Rioja ‘792 and ‘859 would have instructed one of ordinary skill
in this art that in each of the alloy groups of these references we set forth above, the selection of
an amount for each element falling within the weight percent range for that element will result in
an alloy which has the properties taught in the reference when processed as disclosed therein, the
selection of the amount of an element following the teachings of the reference with respect to
properties of the result alloy being within the ordinary skill of this person. Indeed, we will not
hear the assignee of the present application and of each of Rioja ‘792 and ‘859 to assert that
Rioja ‘792 claims 1 (product) and 19 (process) and Rioja claims ‘859 process claims 13, 21, 36,
37, 43, 44, 49 and 50 do not encompass each and every alloy within the groups of alloys set forth
therein, which is the clear interpretation of the language of these claims.
Appellants correctly contend that the disclosure in the first alloy group from Rioja ‘859
cited above has a lower limit on the Li weight percent range of 0.5 which does not overlap with
the upper limit of the claimed Li weight percent range of 0. 4 (brief, pages 5-6). However, we
find that one of ordinary skill in the art would have expected that alloys which differed in this
respect to have the same properties. See Titanium Metal, supra (“[T]he Russian article discloses
two alloys having compositions very close to that of claim 3, which is 0.3% Mo and 0.8% Ni,
balance titanium. The two alloys in the prior art have 0.25% Mo - 0.75% Ni and 0.31% Mo -
0.94% Ni, respectively. The proportions are so close that prima facie one skilled in the art would
have expected them to have the same properties.”).
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