Appeal 2007-2242
Application 10/352,997
Federal Circuit ruled, "We decline to extract from Merck[ ] 2 the rule that the
Solicitor appears to suggest that regardless of how broad, a disclosure of a
chemical genus renders obvious any species that happens to fall within it."
In re Jones, 958 F.2d 347, 350, 21 USPQ2d 1941, 1943 (Fed. Cir. 1992).
In the present case, no fewer than 12 elements are named in
Applicants' claim 1, each with a prescribed range of relative amount. Of
those 12 elements, Lee discloses only five (Fe, C, Mn, P, and S) that are
entirely within the recited (in the case of iron, implied) ranges, and three
more (Si, Mo, and W), that have a substantial and preferred overlap with the
claimed ranges. Lee's preferred amounts of the remaining four elements, as
shown in the majority opinion, are not within the scope of Applicants'
claimed subject matter. Conversely, Lee indicates that amounts in
Applicants' ranges tend to lead to properties, such as a loss in high
temperature ductility, that Lee is trying to avoid.
The evidence favoring a conclusion of obviousness are Lee's general
teachings of ranges of elements in steel alloys. The contrary evidence are
Lee's specific cautions that certain ranges of four elements, Cu, Ni, Cr, and
N, lead to undesired results in the general class of claimed steel alloys.
Particularly because it appears that all the elements interact with one
another, this does not seem to be a case of linear optimization of
independent parameters. Moreover, the Examiner has not directed our
attention to any teachings suggesting that the specific combination of ranges
of the required elements would have been expected to be beneficial. In light
of the complexity and unpredictability of the art of steel alloys indicated by
2 Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed.
Cir. 1989).
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