Appeal No. 2005-0567
Application 10/280,391
(“The law is replete with cases in which the difference between the claimed invention and the
prior art is some range or other variable within the claims. [Citations omitted.] These cases have
consistently held that in such a situation, the applicant must show that the particular range is
critical, generally by showing that the claimed range achieves unexpected results relative to the
prior art range. [Citations omitted.]”); Titanium Metals, supra; Boesch, supra; Best, supra;
Malagari, supra; Aller, supra.
Turning now to claim 7, which specifies that the method of casting of claim 6 include,
after the casting step, hot isostatic pressing the cast article, the examiner finds that, prima facie,
the combined teachings of Sekino and Stalker would have suggested to one of ordinary skill in
this art to hot isostatic press the heat resistant alloys of Sekino by the method of Stalker (e.g.,
col. 2, ll. 1-25) in the reasonable expectation of improving structural integrity by removing
casting defects (answer, page 6). We find that, prima facie, the combined teachings of Sekino
and Stalker provide substantial evidence in support of the examiner’s position. We interpreted
claim 7 to encompass any hot isostatic pressing step for a cast article of the composition of claim
6, and we find that Stalker in fact would have disclosed the application of such treatment to
superalloys that nominally include the elements Ni, Co, Fe and Ti and can be treated in the range
of 1300-2250° F., that is, 704.444-1232.22° C. (e.g., col. 2, ll. 1-35, table I and the
Examples). We further find that one of ordinary skill in this art would have recognized that the
alloys so described by Stalker would include the heat resistant alloys of Sekino which can be hot
worked at temperatures within the range of the Stalker process, and Sekino does disclose that
such alloys can exhibit hot work cracking (e.g., col. 1; see above pp. 6-7). Thus, prima facie,
one of ordinary skill in this art routinely following the combined teachings of Sekino and Stalker
would have arrived at the claimed invention, including each and every limitation of claim 7
arranged as required by that claim, without resort to appellants’ specification and claim. In re
Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988) (“The consistent
criterion for determination of obviousness is whether the prior art would have suggested to one
of ordinary skill in the art that [the claimed process] should be carried out and would have a
reasonable likelihood of success, viewed in light of the prior art. [Citations omitted.] Both the
suggestion and the expectation of success must be founded in the prior art, not in the applicant’s
disclosure.”); In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981)(“The test for
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