Appeal No. 2000-0491 Page 5
Application No. 08/906,855
teachings of Jin, setting forth several scenarios as to why this would be the case (Answer,
pages 4 and 5).
As manifested in all three of the independent claims, the appellants’ invention
includes the steps of wire-drawing the metal pipe filled with the powder material, and then
heat-treating it, at least two times. This is in stark contrast to the method taught by Jin in
which, while there might be multiple wire-drawing steps, there is only one heat-treating
step, and it occurs after all of the wire-drawing steps have been completed (see column 3,
lines 10-15 and column 5, line 49 through column 6, line 11). Thus, from our perspective,
there is absolutely no basis from which to conclude that one of ordinary skill in the art would
have found suggestion, from the Jin patent itself, to modify the Jin method by interposing
additional heat-treating steps between wire-drawing steps. We fail to perceive any
teaching, suggestion or incentive which would have led one of ordinary skill in the art to
modify the Jin method in the manner proposed by the examiner. The two scenarios set out
by the examiner in support of the rejection are ill-conceived, for both are based upon
producing a finished product that is later found to be undesirable, and then wire-drawing
and heat-treating it again until it becomes desirable. In our view, the rejection is grounded
in the hindsight accorded one who first viewed the appellants’ disclosure which, of course,
is not a proper basis for a rejection under Section 103. See In re Fritch, 972 F.2d 1260,
1264, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
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