Appeal No. 2005-1439
Application No. 09/943,987
appellant has failed to point to any evidence in the record which establishes that the claimed
ranges are indeed critical. See In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA
1965) (arguments in the brief do not take the place of evidence in the record).
We further note that the appellant's claim 5 is directed to a master alloy for combining
with gold. Diamond also indicates that the disclosed alloys may be made as master alloys to be
mixed with gold. See col. 2, lines 24-25; compare appellant's specification, p. 9. Thus, one of
ordinary skill in the art would have understood that the alloy recited in claim 2 of Diamond
could have been made as a master alloy and then mixed with gold. Working backwards to
calculate the amounts of silver, copper and cobalt in the master alloy used to make the alloy of
claim 2, one of ordinary skill in the art would have understood that the master alloy contains
60.8% silver, 29.28% copper and 8% cobalt, amounts which clearly fall within the ranges of
silver, copper and cobalt recited in the appellant's claim 5. Cf. Wertheim, 541 F.2d at 267, 191
USPQ at 100 (the disclosure in the prior art of any value within a claimed range is an
anticipation of the claimed range).
For the reasons set forth above, the appellant has failed to rebut the prima facie case of
obviousness set forth by the examiner. See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ
785, 788 (Fed. Cir. 1984) ("[a]fter a prima facie case of obviousness has been established, the
burden of going forward shifts to the applicant"). Therefore, the rejection of claim 1 under 35
U.S.C.
§ 103(a) as being unpatentable over Diamond is affirmed. Since the patentability of claims 2-6
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