Appeal No. 1997-2958 22
Application No. 08/401,719
Furthermore, Komatsubara discloses performing final annealing to insure recrystallized structure during
superplastic forming. In other words, Komatsubara teaches a relationship between the final annealing
processing conditions and the superplastic forming properties of the product plate. Therefore, a means
to achieve the optimal condition, i.e. optimizing the annealing parameters, is taught by Komatsubara.
Cf. In re Rijckaert, 9 F.3d 1531, 1533, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993). As discussed
above, appellants have not presented the level of evidence necessary to show criticality of the
temperature and time ranges. These are the parameters alleged to result in the bending and yield
strength properties claimed. The level of evidence is insufficient to rebut the prima facie case for the
reasons given with respect to claim 4.
Product-by-Process Claim 20
Claim 20, a product claim to the alloy plate, is in product-by-process format. The claim is
limited to a plate consisting essentially of the alloying elements, which have already been established as
taught by Komatsubara, formed by casting, rolling in which a cold rolling rate at a final stage of the
rolling is at least 50%, and final annealing at 70-250°C so that the plate has non-recrystallized crystal
structure.
"Even though product-by-process claims are limited by and defined by the process,
determination of patentability is based on the product itself. The patentability of a product does not
depend on its method of production. If the product in the product-by-process claim is the same as or
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