Appeal No. 2006-1756
Application 10/087,742
what it regarded as constituting a material change in the basic and novel characteristics of the
invention. The question for our decision is whether PPG did so.”).
Our review of the written description in the specification reveals no teaching that Bi
and/or In materially affect the basic and novel characteristics of the claimed solder composition,
and indeed, appellants clearly state that
[a] low-melting metal such as Bi or In may be added as a solder component to the
solder in order to lower a working temperature. In this case, the invented solder can
exhibit the same advantages as above. [Specification, page 8, ll. 18-21.]
Thus, appellants have not carried their burden to establish that the written description in the
specification evinces that Bi and/or In are deleterious to the basic and novel characteristics of the
claimed composition of matter encompassed by the appealed claims, and thus, excluded from the
claims by reasons of the transitional term “consisting essentially of.” See PPG Indus., 156 F.3d
at 1354, 48 USPQ2d at 1353-54; Herz, 537 F.2d at 551-52, 190 USPQ at 463.
Appellants further submit, with respect to claim 2, that Rikiya would not have taught
using the solder disclosed therein “in connection with a transition metal conductor which is
liable to spread in molten tin nor a solder” in which the transition metal is, among others, Cu
(brief, page 6). The examiner responds that Rikiya would have disclosed that the lead-free
solder disclosed therein can be applied to electronic equipment, and that it was well known that
the transition metal Cu is used alone and in alloys as conductors in such equipment (answer,
page 5). Appellants reply that there is no evidence supporting the examiner’s contention that the
use of Cu in conductors was known, and that “to the extent that it may be true,” such a
contention is “hindsight” as there is no evidence that “the conductor is liable to spread in molten
tin” (reply brief, page 3).
We find substantial evidence in the record in support of the examiner’s position. That
Cu alone and in an alloy is used as a conductor in electronic equipment is so well known as to
defy dispute, and appellants have not established to the contrary. See In re Ahlert, 424 F.2d
1088, 1091-92, 165 USPQ 418, 420-21 (CCPA 1970) (notice may be taken “of facts beyond the
record which, while not generally notorious, are capable of such instant and unquestionable
demonstration as to defy dispute”). Thus, one of ordinary skill in this art would have reasonably
applied a lead-free solder within the teachings of Rikiya, including a lead-free solder disclosed
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