Appeal No. 2006-1756
Application 10/087,742
therein falling within claim 1, to the Cu conductor of any manner of electronic equipment,
notwithstanding whether that person would have recognized that Cu is liable to spread in molten
Sn.
Appellants finally submit with respect to Rikiya that “there is no suggestion to pick only
one member of the group” of elements specified in appealed claim 1 as required by claim 6
(brief, pages 8-9). We agree with the examiner’s position (answer, page 5), and particularly in
view of the substantial evidence that Rikiya (e.g., [0011] and [0014]) would have taught that the
lead-free solder disclosed therein containing Cu, Sn, and Bi and/or In, can further contain “one”
of, among others, Pd and Fe, which is all that claim 6 requires.
We now consider Carey and appellants’ contentions that the tin alloys taught in cols.
27 through 30 of the reference contain one or more of a number of “elements, one of which is
even lead,” that “[n]one of the specific tin alloys” falls within the claims, and that “preferred
compositions (col. 30, lines 6-29) do not contain copper” (brief, page 7). On this basis,
appellants submit that “[t]here are many millions of combinations that fall within” the teachings
of the reference “before considering [sic] amount of each element,” and that the reference would
have disclosed “tens of millions, if not hundreds of millions, of compositions outside of the
scope of the claims,” arguing that “[t]here is clearly no motivation to manipulate the Carey
disclosure to realize the claimed solder” or “guidance about which elements to select and which
to ignore, or how to adjust concentrations” (id., pages 7-8; reply brief, pages 3-4). Appellants
thus submit that the disclosure of the reference “does not render a claim to a small number of
compounds obvious,” relying on In re Baird, 16 F.3d 380, 29 USPQ2d 1550 (Fed. Cir. 1994),
and In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992) (brief, pages 7-8; reply brief,
pages 3-4). The examiner responds that one of ordinary skill in this art would have been
motivated to select the claimed elements in ranges of amounts from the disclosure of Carey in
the reasonable expectation of arriving at a composition which achieves Carey’s objectives
(answer, page 6).
We find substantial evidence in the record supporting the examiner’s position. We find
that Carey would have disclosed to one of ordinary skill in this art general, typical and preferred
formulations for Sn alloys which can be used as lead-free solders by listing elements in ranges of
amounts which would provide alloys that have the characteristics taught by the reference (e.g.,
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