Appeal No. 1999-0736
Application 08/167,581
cracking and a reduction of critical current density (col. 3,
lines 26 to 51), one of ordinary skill would have been motivated
to include such a degassing step in the method of Arendt in order
to gain the advantages taught by Sato ‘699. Since the
modification of Arendt in view of Sato ‘699 would have been
obvious for the purpose taught by the latter, the fact that Sato
‘699 may not teach that the bonding properties of the 2223 phases
are improved thereby does not affect the viability of the
combination. As stated in In re Baxter Travenol Labs., 952 F.2d
388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991), “[m]ere
recognition of latent properties in the prior art does not render
nonobvious an otherwise known invention.” Moreover, as the
examiner points out at pages 7 to 8 of the answer, part of
appellants’ disclosed purpose in degassing is to prevent swelling
of the wire (specification, page 4, lines 24 to 33), which is the
same purpose as taught by Sato ‘699.
Appellants further argue that, even if combined, Arendt and
Sato ‘699 do not disclose preparation of a powder “of not more
than 1 µm in mean particle diameter,” as recited in claim 1. The
examiner recognizes that Arendt does not disclose this specific
particle size. However, Arendt does disclose that in the
prepared powder, the 2122 powder has an average particle size
4
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