Appeal 2007-0136
Application 90/006,222
those in the art understood the options available in carbide choices and could
be relied upon to choose appropriate combinations without guidance.
Newman also shows an appreciation of spherical particles. Although
Newman does not expressly teach sintered spheres or cast-spherical filler,
the value of a reference is not limited to what it expressly teaches.40 BHI
has certainly not demonstrated that Newman teaches away from the use of
spherical particles. Indeed, in view of BHI's own characterization of the art
as appreciating the virtues of cast spherical carbides, such an argument is
scarcely possible. Moreover, those with actual skill in the art would have
appreciated that the reasons for casting generally spherical particles could be
generalized to carbides formed other ways, such as by sintering.
Newman used the carbides in combination with a matrix-metal tube.
Newman preferred using carbides in a coating as well, but the claims
properly construed do not exclude such coatings. As long as some carbides
are used to fill the tube, excess carbides may be outside the tube and still be
part of what comprises the overall hardfacing composition.
Similarly, the weight-percentage limitation depends on the claim
construction. It literally applies to granules, not the carbide subcomponents.
Moreover, it applies to one of two defined, balanced components said to
comprise the composition. Construing the ambiguity in the claim broadly,
the weight-percentage applies only to the balanced components, not to other
components of the overall composition. While Newman's examples suggest
that the weight-percentage of filler is the sort of variable that skilled artisans
optimize without much guidance, it so happens that the preferred ranges in
40 In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1782 (Fed. Cir.
1992) (observing that it is well-settled that a reference is good for all that it
would have taught those of skill in the art).
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