Appeal No. 1998-2257
Application 08/692,310
36 to 42 as required by claim 32.
The examiner argues that it would have been obvious to
one of ordinary skill in the art to use Nakajima’s testing
method (col. 3, lines 27 and 66) to test the product which
would be produced by following the combined teachings of the
other applied references (answer, page 6). The appellants’
claim 32, however, does not recite a testing step but, rather,
recites, in the form of figures 36-42, alloy characteristics
which are measured by the recited techniques. It is these
characteristics which the prior art relied upon by the
examiner must possess or have fairly suggested to one of
ordinary skill in the art, and the examiner has not
established that the relied-upon prior art meets this
requirement.
For the above reasons, we conclude that the examiner has
not carried the burden of establishing a prima facie case of
obviousness of the claimed invention over Rieke in view of
Dye ‘180 or the Dye article, further in view of Kilner and
Nakajima. Consequently, we reverse the rejection over these
references.
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