Appeal No. 2005-0567
Application 10/280,391
single claim for each group of claims subject to a common ground of rejection as representative
of all claims in that group and to decide the appeal of the rejection based solely on the selected
representative claim.”); see also 37 CFR § 41.37(c)(1)(vii) (effective September 13, 2004;
69 Fed. Reg. 49960 (August 12, 2004); 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
We affirm.
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the answer and to the brief for a complete exposition thereof.
Opinion
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the supported position advanced by the examiner that, prima facie, one of
ordinary skill in this art routinely following the teachings of Sekino would have reasonably
arrived at compositions of matter which can be alloys falling within appealed claims 1 through 5,
and that, prima facie, the combined teachings of Sekino with each of Stalker, Fried and Hummel
would have reasonably suggested to this person that such alloys can be successfully cast and
successfully welded such that this person would have reasonably arrived at the methods of
appealed claims 6 through 12 and 15.
In order to consider whether the claimed alloys encompassed by the appealed claims
would have been obvious from the alloys taught by Sekino, we must first interpret the language
of appealed claims 1 through 12 and 15 by giving the claim terms their broadest reasonable
interpretation consistent with the written description provided in appellants’ specification as it
would be interpreted by one of ordinary skill in this art, see, e.g., In re Morris, 127 F.3d 1048,
1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22,
13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Herz, 537 F.2d 5649, 551, 190 USPQ 461,
463 (CCPA 1976), without reading into these claims any limitation or particular embodiment
which is disclosed in the specification. See Zletz, supra; In re Priest, 582 F.2d 33, 37, 199
USPQ 11, 15 (CCPA 1978).
We determine from the plain language thereof that each of claims 1 through 12 and 15
encompass “compositions” which can be alloys, that consist essentially of at least the stated
elements in amounts falling within the “weight percent” range for the respective elements, with
nickel and impurities making up the “balance,” regardless of the amounts of any other elements
- 3 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007