Appeal No. 2005-1378 5
Application No. 09/227,242
sheath of its metal-core weld wire, motivated by a reasonable expectation of reducing
fume generation.
The appellants also argue that Nagarajan does not teach or suggest the total
carbon content in the metal-core weld wire as recited in claim 3 and the manganese
content in the steel sheath of the metal-core weld wire as recited in claim 5. See, e.g., the
Brief, pages 7-8. We do not agree.
As indicated by the examiner (Answer, page 6), Nagarajan discloses a metal-core
weld wire having the total carbon content of 0.005-0.15%. See, e.g., column 4, lines 5-15.
This metal-core weld wire has a steel sheath containing 0.1-1.1% of manganese (Mn).
See, e.g., column 4, lines 30-36. The above total carbon and manganese contents overlap
with those recited in claims 3 and 5. As the court in Peterson, 315 F.3d at 1329, 65
USPQ2d at 1382 stated:
In cases involving overlapping ranges, we and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie
case of obviousness. E.g., In re Woodruff, 919 F.2d at 1578, 16 USPQ2d at
`1936-37 (concluding that a claimed invention was rendered obvious by a
prior art reference whose disclosed range (“about 1-5%” carbon monoxide)
abutted the claimed range (“more than 5% to about 25%” carbon monoxide);
In re Malagari, 499 F.2d at 1303, 182 USPQ at 553 (concluding that a
claimed invention was rendered prima facie obvious by a prior art reference
whose disclosed range (0.020-0.035% carbon) overlapped the claimed range
(0.030-0.070% carbon)...
Under the above circumstances, we determine that the examiner has established a
prima facie case of obviousness regarding the claimed subject matter. Thus, the burden of
going forward shifts to the appellants. In re Mayne, 104 F.3d 1339, 1343, 41 USPQ2d
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