Appeal No. 2005-0567
Application 10/280,391
0.8% Ni, balance titanium. The two alloys in the prior art have 0.25% Mo - 0.75% Ni and 0.31%
Mo - 0.94% Ni, respectively. The proportions are so close that prima facie one skilled in the art
would have expected them to have the same properties.”); In re Boesch, 617 F.2d 272, 275-76,
205 USPQ 215, 218-19 (CCPA 1980).
Therefore, the evidence of record establishes that, prima facie, one of ordinary skill in
this art routinely following the teachings of Sekino col. 2, l1. 1-11, in light of the other
disclosure in the reference, would have reasonably arrived at the claimed compositions
encompassed by appealed claims 1 through 5 as well as by appealed claims 6 through 12 and 15,
without resort to appellants’ specification and claims.
Accordingly, with respect to the claimed compositions of matter encompassed by
appealed claims 1 through 5, the burden has shifted to appellants to show that the claimed
compositions would not have been obvious over the compositions taught by Sekino. See
generally, Peterson, 3156 F.3d at 1330, 65 USPQ2d at 1382-83; Geisler, supra; Woodruff,
supra; Titanium Metals, supra; Boesch, supra; Malagari, supra; Aller, supra; see also In re Best,
562 F.2d 1252, 1255-56, 195 USPQ 430, 433-34 (CCPA 1977).
With respect to the methods of providing a cast article from the specified compositions in
claims 6 and 8 through 10, as we interpreted these claims above, prima facie, the disclosure of
Sekino provides substantial evidence in support of the examiner’s position that the claimed
methods would have been taught to one of ordinary skill in this art by the disclosure of casting
compositions falling within these claims into articles, hot working and temper treating, that is,
heat treating, the cast articles and using the articles at temperatures of at least 1300°F
(704.444°C) (answer, page 6). Indeed, with respect to the service temperature of claim 10, we
found above that Sekino discloses that the disclosed heat resistant alloys can be hot worked at
temperatures of from 1,100°C to 1,150°C, that is 2,012°F to 2,102°F, which is well in excess of
the claimed threshold service temperature, and, as the examiner points out, Sekino further
discloses different applications for the cast and treated articles produced from alloys at such
temperatures (e.g., col. 1, ll. 6-25, col. 4, ll. 57-67, and Examples, cols. 5 and 6). Accordingly,
with respect to the claimed methods by appealed claims 6 and 8 through 10, the burden has
shifted to appellants to show that the claimed methods would not have been obvious over the
methods taught by Sekino. See generally, Peterson, supra; Geisler, supra; Woodruff, supra
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