No Unexpected Results Where Prior Art Ranges Overlap Claims Ranges

The U.S. Court of Appeals for the Federal Circuit affirmed a decision of the Board of Patent Appeals and Interferences (Board) of the U.S. Patent and Trademark Office that a patent applicant failed to show unexpected results where the ranges disclosed in the prior art overlapped the claimed ranges. In re Harris, Case No. 04-1370 (Fed. Cir. May 25, 2005) (Ruder, C.J.).

Harris claimed a nickel-based superalloy comprising nickel and twelve additional elements. The claims were rejected over prior art to Yoshinari, which disclosed a nickel-based alloy comprising the same elements. The concentration ranges of each of the twelve additional elements in the prior art overlapped with Harris’ claimed ranges. In fact, eleven of the ranges disclosed in the prior art completely encompassed Harris’ claimed ranges.