Appeal No. 2006-0009 9
Reexamination Control No. 90/005,589
zirconium alloy comprising 0.1-1.2 weight percent niobium, 0.2-1.2 weight percent tin, less than
0.25 weight percent iron and the remainder zirconium and impurities. Anada at 1.3 The
amounts of niobium, tin and iron in the alloy are not limited to amounts of niobium, tin and iron
within the ranges recited in appellant’s claim 1. Furthermore, Anada does not disclose that the
zirconium alloy has a carbon, silicon and oxygen content within the ranges recited in appellant’s
claim 1.4 See Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053
(Fed. Cir. 1987) ("A claim is anticipated only if each and every element as set forth in the claim
is found, either expressly or inherently described, in a single prior art reference."). For these
reasons, the rejection of claim 1 under 35 U.S.C. § 102(b) as anticipated by Anada is reversed.
Claim 1 is also rejected under 35 U.S.C. § 103(a) as obvious over Anada. However, the
examiner has failed to explain why the teachings of Anada render the claimed carbon, silicon
and oxygen contents obvious. See In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984) ("The mere fact that the prior art could be so modified would not have made the
modification obvious unless the prior art suggested the desirability of the modification."). For
3 Reference herein to Anada is to the English translation of record in the reexamination
file.
4 The examiner appears to recognize that Anada does not disclose the claimed carbon,
silicon and oxygen contents. See Answer at 9 (“Anada discloses all but the claimed impurity
levels”).
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007