Appeal No. 2005-0567
Application 10/280,391
The method of providing a cast article encompassed by appealed claim 6 comprises at
least the steps of providing a molten mass of metal having the specified composition by any
process, and casting the molten metal by any process to form a cast article, which articles can be
hot isostatic pressed by any process, otherwise heat treated by any process, placed into any
service application at a maximum service temperature of at least about 1300°F (704.444°C), that
is, at a service temperature range having an limit that is equal to or exceeds about 1300°F
(704.444°C), and welded to any piece of any metal by any process, as in claims 7, 8, 10, and 11,
respectively. The method of preparing a welded article encompassed by appealed claim 12
comprises at least the steps of providing a piece of material having the specified composition by
any process, and welding the piece of metal to any piece of metal by any process to form the
welded article, which can include surface welding by any process as in claim 15. The
transitional term “comprising” in claims 6 and 12 opens appealed claims 6 through 12 and 15 to
methods that include any manner of steps and materials in addition the steps and compositions
listed. See In re Baxter, 656 F.2d 679, 686-87, 210 USPQ 795, 802-03 (CCPA 1981) (“As long
as one of the monomers in the reaction is propylene, any other monomer may be present,
because the term ‘comprises’ permits the inclusion of other steps, elements, or materials.”).
The examiner relies on the heat resistant alloys having excellent hot workability
containing the elements set forth in Sekino claim 2 (answer, page 4). We find the same
disclosure at col. 2, ll. 1-11 of the reference, and refer only to this disclosure in the remainder of
our opinion.
We find that, prima facie, one of ordinary skill in this art routinely following the teaching
at col. 2, ll. 1-11, in light of the other disclosure in Sekino1 would have reasonably arrived at
compositions that are heat resistant nickel alloys which have the properties taught by the
reference. In other words, one of ordinary skill in this art can select the elements from among
those disclosed, in any amount within the weight percent range taught for each element, to form
1 It is well settled that a reference stands 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, see In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir.
1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968); Aller, 220 F.2d at
458-59, 105 USPQ at 237, presuming skill on the part of this person. In re Sovish, 769 F.2d 738,
743, 226 USPQ 771, 774 (Fed. Cir. 1985).
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