Appeal No. 2006-2061
Application 10/195,703
value is less than 0.01 and is reflected in the disclosure “removing . . . sulfur” in paragraphs [11]
and [15], and “0” as the lower end of the ranges for sulfur in Table 1 (paragraph [09]). Thus, the
claims encompasses alloys containing sulfur in the range of 0.0 to 0.01 weight percent. See, e.g.,
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir.
2004); In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re
Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). Similarly, original claims
1 and 25, the latter dependent on claim 18, contain the language “less than about 0.03 weight
percent sulfur,” thus encompassing alloys containing sulfur in the range of 0.0 to about 0.03
weight percent, which range is specifically disclosed in specification paragraph [06] and Table 1
(paragraph [09]).
The same disclosure in the written description of the specification and the original claims
would have reasonably conveyed to one skilled in this art that, as a matter of fact, appellants
were in possession of alloys which contain 0.0 to about 0.03 weight percent sulfur, that is, either
no sulfur or any amount of sulfur up to about 0.03 weight percent, at the time the claimed
invention was filed. Thus, the written description in the specification would have further
reasonably conveyed that appellants were also in possession of alloys within said range
containing no sulfur and any amount of sulfur up to less than 0.01 weight percent at the time the
claimed invention was filed. Indeed, appellants further disclose alloy species A-H containing
0.001, 0.002 or 0.003 weight percent sulfur in Table 2 (paragraph [12]), such amounts falling
within the narrower range.
In other words, on the record before us, the complete disclosure in the specification as a
whole of the originally claimed genus of alloys containing 0.0 to about 0.03 weight percent
sulfur provides a description of the now claimed limited genus of alloys containing 0.0 to less
than 0.01 weight percent sulfur, the limited genus additionally supported by examples of alloy
species falling therein, as well as of the now excluded limited genus of alloys containing 0.01 to
about 0.03 weight percent sulfur. We further find that in the amendment filed September 9,
2004, appellants limited original generic claims 1 and 18 to read as they stand on appeal in
response to the application of prior art under 35 U.S.C. § 102(e) (pages 2, 4 and 7-8).
Thus, we are of the opinion that, as a matter of fact, appealed claims 1 and 18 comply
with 35 U.S.C. § 112, first paragraph, written description requirement. See In re Johnson,
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