Appeal 2007-1488
Application 10/809,072
1 Here, rather than teach away, Monte ‘468, Monte ‘469, and Burd all
2 indicate to one of ordinary skill in the art that helical grain selectors were
3 well known in the art and have been successfully used. In re Fulton, 391
4 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004)(“[M]ere
5 disclosure of alternative designs does not teach away.”). That the Monte
6 references state that helical grain selectors result in certain disadvantages,
7 such as higher cost does not automatically render a claim reciting such
8 helical grain selectors patentable. Specifically, Applicants have not shown
9 that their claimed invention does not suffer from the same disadvantages. A
10 reference “teaches away” if a person of ordinary skill in the art would have
11 been discouraged or led to a divergent path from the one taken by the
12 inventors. In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1132 (Fed.
13 Cir. 1994) (“Although a reference that teaches away is a significant factor to
14 be considered in determining unobviousness, the nature of the teaching is
15 highly relevant, and must be weighed in substance. A known or obvious
16 composition does not become patentable simply because it has been
17 described as somewhat inferior to some other product for the same use.”).
18
19 Rejection II: Burd in View of Either Monte ‘468 or Monte ‘469
20 The Examiner found that the only difference between the invention
21 recited in appealed claim 1 and the system of Burd lies in the use of a seed
22 crystal. This finding is not disputed. The Examiner then found that the
23 Monte references teach the use of a single crystal seed in combination with a
24 non-linear tubular grain selector to ensure that a predetermined crystal
25 structure is obtained in the final cast component. Based on these findings,
26 the Examiner concluded that it would have been obvious to one of ordinary
12
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