Appeal No. 2005-1439
Application No. 09/943,987
The appellant appears to recognize that claim 5 encompasses the claimed alloy but
argues that the broad disclosure is not sufficient to support an obviousness rejection, especially
where Diamond does not provide an example of a 22 karat gold alloy. Brief, p. 7.
With respect to the rejection under 35 U.S.C. § 103(a) at issue, it is of no moment that
Diamond does not provide a specific example of a 22 karat gold alloy. See In re Chapman, 357
F.2d 418, 424, 148 USPQ 711, 716 (CCPA 1966) (a reference is not limited to its specific
illustrative examples); In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976)
(all disclosures of the prior art must be considered under 35 U.S.C. § 103). As explained above,
Diamond expressly states that the disclosed invention contemplates gold alloys ranging from 8
karat to 22 karat. See col. 2, lines 13-15. Furthermore, the gold alloy in claim 5 of Diamond
encompasses 22 karat gold alloys (91.67 parts gold), and the ranges of silver, cobalt and copper
in that alloy clearly overlap the appellant's claimed ranges of silver, cobalt and copper. It is
well-settled that where the difference between the claimed invention and the prior art is
overlapping ranges, the appellant must show that the particular ranges are critical. In re
Wertheim, 541 F.2d 257, 267, 191 USPQ 90, 100 (CCPA 1976); In re Woodruff, 919 F.2d
1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Apparently in an attempt to distinguish the claimed gold alloy from the gold alloy
disclosed in Diamond, the appellant argues that the claimed alloy has sufficient hardness for
jewelry applications and desirable color characteristics. See Brief, p. 6. To the extent that the
appellant is arguing that the claimed ranges of silver, copper and cobalt are critical, the
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