## Facts

- Inventors employed by Titanium Metals Corporation of America filed a continuation-in-part patent application claiming titanium-based Ti–Mo–Ni alloy compositions with low iron, described as having good corrosion resistance in hot brine environments.
- Claim 1 recited a titanium-base alloy with about 0.6%–0.9% nickel, 0.2%–0.4% molybdenum, up to 0.2% iron, balance titanium, and the stated corrosion-resistance characteristic; claim 2 tightened the iron limit to 0.1%; claim 3 claimed a specific preferred composition within the disclosed ranges.
- A PTO examiner rejected claims 1–2 as anticipated under 35 U.S.C. § 102 based on a 1970 Russian publication describing Ti–Mo–Ni alloy compositions and experimental testing, and rejected claim 3 as obvious under 35 U.S.C. § 103.
- The PTO Board of Appeals affirmed, treating all three claims as anticipated under § 102.
- Titanium Metals sued the Commissioner in a civil action under 35 U.S.C. § 145; the district court credited expert testimony and ordered issuance of a patent with claims 1–3.
- The Commissioner appealed; the Federal Circuit reversed the district court.

## Issues

1. Whether prior-art disclosure of the same alloy compositions anticipates composition claims under 35 U.S.C. § 102 even if the reference does not disclose the asserted property or end use.
2. Whether a narrower “preferred” composition within ranges disclosed in the prior art is unpatentable as obvious under 35 U.S.C. § 103 absent proof of criticality or unexpected results tied to that specific selection.

## Decision

- The Federal Circuit reversed the district court’s judgment ordering issuance of the patent.
- Claims 1 and 2 were anticipated under § 102 because the prior-art reference disclosed and enabled alloy compositions within the claimed ranges.
- Claim 3 was unpatentable under § 103 because selecting a specific composition within known ranges was an obvious optimization absent evidence that the specific values were critical or produced unexpected results.

## Legal Principles

- A composition-of-matter claim is anticipated when a prior-art printed publication discloses the same composition (including compositions falling within claimed ranges) and enables a skilled artisan to make it.
- For composition claims, newly discovered properties or uses of an old composition do not make the composition “new” under §§ 101–102 and do not avoid anticipation.
- A prior-art reference need not recognize or describe the applicant’s asserted advantageous property to anticipate the composition; the relevant inquiry is whether the composition itself was already disclosed.
- When prior art discloses general composition ranges, claiming a narrower range or specific values within those ranges is ordinarily obvious unless the applicant shows criticality or unexpected results linked to the claimed selection.

## Conclusion

The Federal Circuit held that prior art disclosing and enabling the same Ti–Mo–Ni alloy compositions barred patentability of broad composition claims despite later-discovered corrosion resistance, and that a narrower preferred composition within known ranges was obvious without proof that the particular selection was critical or unexpectedly superior.


Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775 (Fed. Cir. 1985)