Appeal No. 2005-1378 4
Application No. 09/227,242
carbon content of less than 0.005% as required by claims 1, 8 and 11. Id. We do not
agree.
As found by the examiner (Answer, page 5), Nagarajan teaches a steel sheath
having a carbon content as low as 0.005% which is very close to the carbon contents
recited in claims 1, 8 and 11. Due to the closeness of the percentages of the carbon
employed in the claimed and Nagarajan’s steel sheaths, one of ordinary skill in the art
would have reasonably expected them to provide the same or similar properties. See In re
Peterson, 315 F.3d 1325, 1329, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003)(“[A] prima face
case of obviousness exists when the claimed range and the prior art range do not overlap,
but are close enough such that one skilled in the art would have expected them to have
the same properties.”) (citing Titanium Metals Corp. v. Banner, 778 F.2d 775, 783, 227
USPQ 773, 779 (Fed. Cir. 1985)).
Moreover, we note that a steel sheath having a very low carbon content was known
to be desirable for reducing fume generation in a weld wire, i.e., a flux-core weld wire, and
a metal-core weld wire (which also uses a steel sheath like the flux-core weld wire) was
known to have a fume generation problem . See the appellants’ admission at pages
2-3 of the specification. One of ordinary skill in the art armed with such knowledge would
have been led to employ either the lowest carbon content taught by Nagarajan or slightly
lower carbon content than the lowest carbon content taught by Nagarajan in the steel
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