Appeal No. 2005-1439
Application No. 09/943,987
For purposes of this appeal, the patentability of claims 2-6 and 8-12 stands or falls with
the patentability of claim 1, and the patentability of claim 7 stands or falls alone. See 37 CFR
§ 1.192(c)(7) (2003); 37 CFR § 41.67(c)(1)(vii) (2004).
Discussion
A. Rejection of claims 1-6 and 8-12 under 35 U.S.C. § 102(b)
According to Diamond, the disclosed invention contemplates improved yellow gold
karat metal alloys ranging from 8 karat to 22 karat. See col. 2, lines 13-15. Diamond provides
examples of 8 karat, 10 karat, 14 karat and 18 karat gold alloys but does not provide an example
of a 22 karat gold alloy. The examiner points to a gold alloy in claim 5 of Diamond wherein the
lower limit of silver corresponds to the lower limit of silver recited in claim 1, the lower limit of
copper falls within the range of copper recited in claim 1, and the upper limit of cobalt
corresponds to the upper limit of cobalt recited in claim 1. Ex parte Lee, 31 USPQ2d 1105,
1106 (Bd. Pat. App. & Int. 1993). However, the alloy is not limited to a 22 karat gold alloy
(91.67 parts gold) but rather includes a gold alloy ranging from 8 karat (33.3 parts gold) to
greater than 22 karat (92 parts gold).
Since Diamond does not expressly describe an example of a 22 karat gold alloy
comprising amounts of silver, cobalt and copper which either "touch" or fall within the ranges
of
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