Appeal No. 2006-0009 6
Reexamination Control No. 90/005,589
reference into the dependent claim.”).
Claims 1-4 are also rejected under 35 U.S.C. § 103(a) as obvious over Sabol. Although
Sabol does not expressly describe an example of a zirconium alloy comprising amounts of
niobium, tin, iron, carbon, silicon and oxygen within the ranges recited in claim 1, Sabol does
describe a zirconium alloy comprising amounts of niobium, tin and iron which overlap the
claimed ranges. Compare Sabol at col. 2, lines 54-59 with appellant’s claim 1. See In re
Wertheim, 541 F.2d 257, 267, 191 USPQ 90, 100 (CCPA 1976) (where the difference between
the claimed invention and the prior art is overlapping ranges, the appellant must show that the
particular ranges are critical). Sabol also indicates that a zirconium alloy in accordance with the
disclosed invention would contain amounts of carbon, oxygen and silicon within the ranges of
carbon, oxygen and silicon recited in appellant’s claim 1. See Sabol at cols. 5-6, Table IV.
In its brief, the appellant focuses its arguments on the range of tin disclosed in Sabol, i.e.,
“up to 1.5 percent tin.” See Brief at 11-12. The examiner correctly points out that the phrase
“up to” includes zero. Answer at 4. This range (up to 1.5%) encompasses the range of tin
recited in claim 1 (0.2% to 0.6%). However, the appellant argues that the teachings of Sabol as a
whole would have led one of ordinary skill in the art away from the tin concentration recited in
claim 1. For support, the appellant relies on the following passage in Sabol at column 2, lines
59-65:
While tin and the third alloying element are present in an amount up to the
percentages by weight listed, the minimum amount present would be that
sufficient to give the desired corrosion resistance in the articles produced
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