Appeal 2007-0882
Application 10/702,987
can be deliberately made to be different." Answer 3 and 6. White clearly
teaches that the superalloy may have a nickel-base. (Findings of Fact 2 and
5). In our view, these findings are sufficient to establish that one of ordinary
skill in the art would have been motivated to use “a restoration nickel-base
superalloy different from that of the nickel-base superalloy article” in
White’s process. See KSR Int’l Co. Teleflex, Inc., 127 S. Ct. 1727, 1741,
82 USPQ2d 1385, 1396 (2007)( quoting In re Kahn, 441 F.3d 977, 988,
78 USPQ2d 1329, 1336 (Fed. Cir. 2006)) (“analysis [of whether the subject
matter of a claim is obvious] need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.”).
Specific compositional limitations (claims 7-11 and 15-19)
Appellants argue that White fails to teach the specific nickel-base
superalloy compositions recited in the claims. The Examiner, however,
found that White’s process is applicable to a broad range of superalloys
which would include the claimed compositions. Answer 4. (See Finding of
Fact 2). Thus, the burden was properly shifted to Appellants to demonstrate
that the claimed compositions and those of White are not the same (see In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657-58 (Fed. Cir. 1990)
(“[W]hen the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not”; In re Best, 562 F.2d 1252, 1255-56,
195 USPQ 430, 433-34 (CCPA 1977)), or that the claimed composition
produce a new and unexpected result which is different in kind and not
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