Appeal No. 2003-1930
Application No. 09/797,326
1980); In re Ornitz, 351 F.2d 1013, 147 USPQ 283 (CCPA 1965); In re Aller, 220 F.2d
454, 105 USPQ 233 (CCPA 1955). These cases have consistently held that in such a
situation, the applicant must show that the particular range is critical, generally by showing
that the claimed range achieves unexpected results relative to the prior art range.”)
In the present case the Appellants have relied on a single example, that falls within
the disclosure of the claimed invention, to establish the allegedly unexpected results.
Appellants assert the comparison to the alloy CM 186 LC® is within the preferred ranges of
Yoshinari. (Rehearing request, p. 2). However we note that the CMSX®-486 alloy falls
within the broad disclosure of Yoshinari.2 According to Appellants, Rehearing request
page 2, the alloys CM 186 LC® and CMSX®-486 are compositionally similar except for the
amount of chromium and tantalum. Appellants have not explained why alloy CMSX®-486 is
representative of the claimed invention and not of the Yoshinari reference. Appellants have
also not adequately explained why alloy CMSX®-486 is commensurate in scope with the
range of alloys encompassed by the claimed subject matter. See In re Boesch, 617 F.2d at
276, 205 USPQ at 219. The establishing of the significance of the claimed range is
especially relevant in this appeal where Yoshinari discloses alloy components in ranges
2“[I]n 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.’” Merck & Co. Inc. v. Biocraft Laboratories 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)).
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