Appeal 2007-2242
Application 10/352,997
“[S]imply because an invention falls within a range disclosed by prior
art does not necessarily make it per se obvious.” Iron Grip Barbell Co. v.
USA Sports Inc., 392 F.3d 1317, 1321, 73 USPQ2d 1225, 1228 (Fed. Cir.
2004). “Nonetheless, where there is a range disclosed in the prior art, and
the claimed invention falls within that range, there is a presumption of
obviousness.” Id at 1322, 73 USPQ2d at 1228. “But the presumption will
be rebutted if it can be shown … [t]hat the prior art taught away from the
claimed invention.” Id.
Applicants claim steel containing “not more than 0.1%” Cu (Br. app.
A). Lee teaches that impact toughness may be improved by adding Cu (Lee,
p. 4, ll. 32-33). Applicants seek to decrease the percentage of Cu. Of the 48
examples contained in Lee, not one steel composition contains less than
0.1% Cu (Lee, pp. 9-11, Table 1). Lee’s examples include from 0.19-1.04%
Cu (Lee, pp. 9-11, Table 1).
With respect to Ni, Lee discloses (Lee, p. 4, ll. 35-40; emphasis
added):
The Ni is an important element which stabilizes the austenite
phase. However, if the content of Ni departs from the proper range,
the ratio of the austenite phase to the ferrite phase is disturbed, with
the result that the duplex stainless steel loses its intrinsic properties.
Particularly, in the case where the content of Ni is less than 5%, the
ferrite phase which has a low solubility of N is increased, and the
chromium nitride is formed in the ferrite phase, with the result that the
corrosion resistance and the impact toughness are lowered. Therefore,
the content of Ni should be preferably limited to 5-8%.
Applicants claim steel containing 7.3-10% Ni (Br. app. A). Of the 48
examples of steel compositions contained in Lee, not one contains as much
as 7% Ni (Lee, pp. 9-11). The maximum percentage of Ni in any of Lee’s
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