Appeal 2007-1803
Application 10/716,512
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).
Appellants further argue that Vander Voort would not have suggested
using the here claimed amount of oxygen in the steel compositions of
Robelet (Br. 13) as urged by the Examiner. According to Appellants, this is
because Vander Voort teaches adding oxygen to enhance toughness/
embrittlement of iron rather than steel (id.). While this last point is correct
(Vander Voort 1), we share the Examiner's determination that the enhanced
toughness/embrittlement consequence of oxygen addition as taught by
Vander Voort would have been expected by an artisan to also occur in
Robelet's steel compositions due to the high iron content thereof (Answer 9).
Significantly, this determination has not been contested by Appellants on the
record before us, nor has the Appellants contested the Examiner's related
determination that enhanced toughness/embrittlement would have been
desirable in the steel of Robelet.
For a number of reasons, there is no convincing merit in the
Appellants' argument that Robelet contains no teaching or suggestion of the
other constituents and amounts required by claim 1. First, Robelet discloses
these other constituent amounts in ranges which overlap those of claim 1
(col. 2, ll. 65-col. 3, l. 67), and therefore, it would have been obvious for an
artisan to select Robelet's amount values which fall within the claimed
ranges. See In re Peterson, 315 F.2d 1325, 1329, 65 USPQ2d 1379, 1382
(Fed. Cir. 2003). Second, in Robelet's third example (col. 5, l. 46-col. 6,
l.14), the steel composition includes 0.39 wt% carbon and 0.105 wt%
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Last modified: September 9, 2013