In re Harris (Fed. Cir. 2005).
By Mark Chael and Dennis Crouch
The CAFC today upheld a Patent Office determination that pending claims relating to a chemical composition were obvious in view of overlapping prior art ranges. The patent application at issue relates to nickel-based superalloys for turbine engines that operate under high temperatures. (e.g., CMSX-486®). The superalloy includes 12 elements, with the balance being nickel and incidental impurities. Claim 1, for instance includes:
A nickel-base superalloy comprising, in percentages by weight, from about 4.3% to about 5.3% chromium, (Cr), from about 9.0% to about 10.0% cobalt (Co), . . . the balance being nickel and incidental impurities.
The PTO rejected the claim as obvious in view of prior art references that disclosed overlapping ranges of elemental quantities. Harris appealed to the CAFC.
The PTO has the initial burden of showing prima facie obviousness by presenting evidence that the ranges of a claimed composition overlap the ranges disclosed in the prior art. In this case, all twelve ranges in claim 1 overlapped the ranges disclosed in the art, and eleven of them were completely encompassed. Despite that fact, Harris argued that the disclosures were too broad to teach any specific alloy falling within the ranges. The CAFC disagreed, finding that the ranges were prima facie obvious because they “sufficiently overlap the [claimed] ranges.”