Appeal No. 2001-1306
Application No. 08/939,762
The examiner further argues that “Be is mentioned in the prior
art although not the exact same composition.” Answer, page 3. The
examiner then finds that Osame “does disclose the use of Be”
without specifying that this use is as part of the matrix powder
(Answer, sentence bridging pages 3-4).
The examiner further concludes that “the method of making a
product using different starting materials may be obvious if the
method is otherwise the same,” citing, inter alia, In re Durden
(Answer, page 4). As correctly argued by appellants, this
conclusion of the examiner is incorrect (Brief, page 10; see In re
Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1132 (Fed. Cir. 1996).
We note that Daver and Kazakos do not remedy the above
discussed deficiency in Osame and Wallace, as these secondary
references were applied to show removal of an oxide coating by the
flux (Daver) and ceramic coatings (Kazakos)(Paper No. 8, page 4).
Furthermore, the examiner has failed to present any convincing
showing as to why the secondary references to Daver and Kazakos
would have been combined with Wallace and Osame (Answer, page 4).
See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999). The examiner has not presented any convincing evidence
or reasoning as to why one of ordinary skill in the art would have
used the process of Daver to remove surface oxides in the process
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