Appeal No. 2003-1930
Application No. 09/797,326
encompassing the claimed alloy component ranges. The alloy CMSX®-486 is limited to only
one composition however, the claims are not so limited.
Appellants also have not shown why the alloy CM 186 LC®, alleged to be
representative of the Yoshinari reference, is believed to be the closest prior art. See In re
Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 71 (CCPA 1979). We note that Appellants,
Rehearing request page 2, have indicated that the comparative alloy CM 186 LC® has been
optimized for high temperature strength. However, Appellants have not indicated that this is
the same procedure required by Yoshinari. Nonetheless, the results sought to be proven by
the various alloys discussed in the specification are lost since the alloy CMSX®-486 falls
within the scope of the disclosure of Yoshinari.
Appellants assert the affirmation of the rejection based on Harris is improper because
the rejection is based exclusively on Harris. Specifically, Appellants are questioning our
determination that “a person of ordinary skill in the art would have reasonably recognized
the results that would have been obtained by adjusting the content of Ta and Cr.” (Rehearing
request, p. 4). We are not persuaded by Appellants’ argument. In an obviousness
determination it is not improper to refer to extrinsic evidence, such as references or
declarations. Extrinsic evidence may be considered when it is used to explain, but not
expand, the meaning of a reference. Scripps Clinic & Research Foundation v. Genentech,
-4-
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