Appeal No. 2006-0902 5
Application No. 10/125,942
In view of the foregoing, appellants have failed to
convince us that a packing fraction within the claimed
range is an inherent feature of the titanium powder which
results from practicing appellants’ disclosed process or,
in other words, that obtaining a titanium powder having
such a packing fraction value is an inevitable consequence
of practicing the disclosed process, which embraces a
variety of starting materials and processing conditions.
To support their position, appellants primarily rely
upon Kennecott Corp. v. Kyocera International, Inc., 835
F.2d 1419, 5 USPQ 2d 1194 (Fed. Cir. 1987); Schering Corp.
v. Geneva Pharmaceuticals, Inc., 339 F.3d 1373, 67 USPQ 2d
1664 (Fed. Cir. 2003); and Smithkline Beecham Corp. v.
Apotex Corp., 74 USPQ 2d 1398, 403 F.3d 1331,(Fed. Cir.
2005).
As we noted in our prior decision, Kennecott is of
limited precedential value inasmuch as resolution of issues
relating to the written description requirement depends
upon the particular facts of each case. In re Edwards, 568
F.2d 1349, 1355, 196 USPQ 465, 470 (CCPA 1978). Kennecott
can be distinguished on its facts since, in Kennecott,
specific working examples in the original disclosure
apparently provided an adequate basis for additional
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