Appeal 2006-1768
Application 10/389,327
F.3d 1568, 1573, 37 USPQ2d 1626, 1629-1630 (Fed. Cir. 1996). The
knowledge generally available to a person having ordinary skill in the art
includes facts admittedly well known in the art. In re Nomiya, 509 F.2d 566,
570-71, 184 USPQ 607, 611-12 (CCPA 1975) (The admitted prior art in the
Appellants’ Specification may be used in determining the patentability of a
claimed invention.); See also, In re Davis, 305 F.2d 501, 503, 134 USPQ
256, 258 (CCPA 1962).
Based upon the foregoing case law, it is appropriate to use Appellants’
admission that a conventional burner port area is about .97 in2 per (MM)
Btu/hr in assessing the patentability of the claims. Nomiya 509 F.2d at 570-
71, 184 USPQ at 611-12. That is, Appellants’ admission of conventional
burner port area is knowledge that would have been generally available to a
person having ordinary skill in the art. Pro-Mold, 75 F.3d at 1573, 37
USPQ2d at 1629-30.
The closeness of Appellants’ claimed burner port area of 1.0 in2 per
(MM) Btu/hr to the conventional burner port area of about .97 in2 per (MM)
Btu/hr supports a conclusion that the conventional about .97 in2 per (MM)
Btu/hr area would have suggested a 1.0 in2 per (MM) Btu/hr area based on a
reasonable expectation that the desired results (e.g., control of flame form)
provided by the former also would be provided by the latter. See, Titanium
Metals Corp. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir.
1985) (explaining that a claimed alloy having 0.3% Mo and 0.8% Ni was
prima facie obvious over a Russian reference disclosing two examples
having 0.25% Mo and 0.75% Ni, and 0.31% Mo and 0.94% Ni, respectively,
because the claimed values were “so close” to the reference values the
claimed alloy could reasonably be expected to have the same characteristics
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