Appeal No. 2005-0567
Application 10/280,391
The “balance” with respect to Ni in the claimed compositions depends on all of the
elements and the amounts thereof present in the composition, including those unspecified
elements which do not materially affect the basic and allegedly novel properties of the claimed
compositions that would be included therein by reason of the transitional term “consisting
essentially of” as we discussed above. We determine that alloys which have only the ingredients
specified in the claims contain Ni in the range of about 42.1901 percent to about 63.3350 percent
in claims 1, 3, 4, 6, 9 and 12, in the range of about 42.1901 percent to about 64.3360 percent in
claim 2, and in the range of about 54.3531 percent to about 54.4630 percent in claim 5, which
are all within the range of 22.0 to 80.0 percent for Ni disclosed in Sekino.
The examiner points out that, prima facie, Sekino would have disclosed to one of
ordinary skill in this art the functions served by the inclusion of the disclosed amounts of Si and
Mn, of one or more of Ce, Mg and Be, as well as of any of W, V, Cu and Y, wherein V, Cu and
Y are limited by the total amount of Ti, Nb, Ta, Al, V, Cu and Y, that may be present in the
alloys of Sekino col. 2, ll. 1-11, with respect to forming a heat resistant alloy having excellent
hot workability which can be cast, and thus would not materially affect the basic and novel
properties of the claimed compositions (answer, pages 4-6). In the absence of a disclosure in the
written description in the specification of elements or amounts thereof which materially affect
the basic and allegedly novel properties of the claimed compositions, and in view of the
disclosure of the functions of the elements and amounts thereof with respect to alloy properties
in cols. 1-4 of Sekino, we agree with the examiner’s analysis. In this respect, the amount of the
elements that are unspecified in the appealed claims and shown in Sekino added to the amounts
of the elements that are specified in the claims, results in a content of Ni in the claimed
compositions of claims 1 through 6, 9 and 12 in the range of about 22.00 percent to about
63.2120 percent which falls within the range of 22.0 percent to 80.0 percent in Sekino col. 2,
ll. 1-11.
Therefore, prima facie, the disclosure of Sekino provides substantial evidence in support
of the examiner’s position that all of the claimed compositions encompassed by appealed claims
1 through 12 and 15 fall within the alloys encompassed by Sekino col. 2, ll. 1-11, taken in light
of the other disclosure in the reference, with the exception of those claimed compositions which
contain less than about 0.0499 weight percent Ta and/or less than about 0.001 weight percent Zr.
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