Appeal No. 2006-1756
Application 10/087,742
col. 5, ll. 12-26, col. 29, l. 53, to col. 30, l. 5, col. 30, ll. 47-63, and col. 32, ll. 11-22). Indeed,
that the specified elements other than Sn can optionally be present is apparent from a range that
has a lower end of zero (“0” and “0.0”). Thus, we find that Carey would have disclosed
formulations of elements in ranges that can be used to formulate lead-free Sn alloys in which the
number of optional elements is 6, 9, 13 and 21. Indeed, Carey would have taught that any
arrangement of any number of the recited elements in an amount within the disclosed range can
be combined with Sn for the intended purposes of a lead-free tin alloy solder, which elements
include Cu, Fe and Mn.
Thus, one of ordinary skill in this art routinely following the teachings of lead-free
Sn alloy solders in Carey would have arrived at lead-free solder compositions containing at least
Cu as well as Fe and/or Mn in ranges of amounts that overlap or fall within the claimed ranges
for these elements or that otherwise slightly differ from the claimed ranges. The latter slight
difference would result in lead-free solders which one of ordinary skill in this art would have
reasonably expected to have the same or similar properties to the claimed lead-free solders.
Furthermore, appellants have not established on this record that the transitional term “consisting
essentially of” excludes from the appealed claims any of the other elements listed in the general,
typical and preferred formulations for as lead-free solders of Carey. Indeed, these formulations
include Bi, which we discussed above, as well as Cr, Ag and Sb, and even Pb, that is, lead,
which can be present in such small amounts as to be considered a contaminate, as provided in the
specification (e.g., pages 2 and 8-9, particularly page 9, ll. 1-3).
On this basis, we determine that one of ordinary skill in this art would have reasonably
arrived at the claimed compositions encompassed by claims 1, 2 and 6, including each and every
limitation thereof arranged as required therein, without recourse to appellants’ disclosure. See
generally, In re Harris, 409 F.3d 1339, 1341-43, 74 USPQ2d 1951, 1953-55 (Fed. Cir. 2005);
In re Peterson, 3156 F.3d 1325, 1330, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003); In re Geisler,
116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997) (citing In re Malagari, 499 F.2d
1297, 1303, 182 USPQ 549, 553 (CCPA 1974)); Haynes Int’l, Inc. v. Jessop Steel Co., 8 F.3d
1573, 1576-77, 1577 n.3, 28 USPQ2d 1652, 1654-55, 1655 n.3 (Fed. Cir. 1993); In re Woodruff,
919 F.2d 1575, 1577-78, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990); Titanium Metals Corp.
of America v. Banner, 778 F.2d 775,783, 227 USPQ 773, 779 (Fed. Cir. 1985); In re Boesch,
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