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In re Peterson

United States Court of Appeals for the Federal Circuit

January 8, 2003, Decided

02-1129, (Serial no. 08/365,392)


 [***1380]   [*1326]  LOURIE, Circuit Judge.

Lance G. Peterson and Ioannis Vasatis (collectively, "Peterson") appeal from the decision of the U.S. Patent and Trademark Office ("PTO") Board of Patent Appeals and Interferences affirming the rejection of claims 1-7 of U.S. Patent Application 08/365,392 as obvious under 35 U.S.C. § 103. Ex Parte Wood, Appeal No. 1998-0535, Paper No. 19 (B.P.A.I. Apr. 23,  [*1327]  2001). Because substantial evidence supports the Board's factual findings and the Board did not err in its conclusion of obviousness, we affirm.


On December 28, 1994, Mr. Peterson filed U.  [**2]  S. Patent Application 08/365,392, which is directed to a nickel-base single-crystal superalloy used in the manufacture of industrial gas turbine engines exposed to high temperatures. The claimed composition includes a relatively small amount of rhenium and aims to improve a single-crystal alloy's mechanical strength without reducing its hot corrosion resistance. Representative claim 5 recites:

A nickel-base superalloy having special utility in the production of single crystal gas turbine engine blades consisting essentially of about 1 to 3 percent rhenium, about 14 percent chromium, about 9.5 percent cobalt, about 3.8 percent tungsten, about 2 percent tantalum, about 1.5 percent molybdenum, about 0.05 percent carbon, about 0.004 percent boron and, respectively, from about 3 to 4.8 percent aluminum, from about 4.8 percent to about 3 percent titanium, and balance substantially nickel.

(emphases added). Peterson and the Board considered that the other claims stand or fall with claim 5, and we will therefore consider only claim 5.

The examiner rejected claims 1-7 under 35 U.S.C. § 103 as obvious over the following prior art references: (1)  [**3]  published European Patent Application 240,451 ("Shah"); (2) published European Patent Application 076,360 ("Wukusick") alone or in view of U.K. Patent 2,153,848 ("Duhl"); and (3) U.S. Patent 3,619,182 ("Bieber") in view of Wukusick. For each ground of rejection, the examiner found a prima facie case of obviousness based on the overlapping element ranges of the prior art compositions and the claimed composition. Peterson responded by arguing that his invention would not have been obvious because the prior art disclosed only the optional use of rhenium and did not suggest that controlled amounts of rhenium would result in advantageous mechanical properties. Peterson also pointed to the unexpected results achieved by his invention: namely, the increased stress rupture life resulting from the addition of a small amount of rhenium. The examiner rejected those arguments in a final office action, finding that Peterson had failed to show criticality of the selected amount of rhenium commensurate in scope with the claims.

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315 F.3d 1325 *; 2003 U.S. App. LEXIS 233 **; 65 U.S.P.Q.2D (BNA) 1379 ***


Prior History:  [**1]  Appealed from: United States Patent and Trademark Office Board of Patent Appeals and Interferences.

Disposition: AFFIRMED.


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