Appeal No. 1999-0764
Application 08/745,199
through 12 and 14, further in view of Davis ‘777.2 For the reasons pointed out by appellants in
the brief and reply brief, the examiner has failed to make out a prima facie case with respect to
both grounds of rejection.
It is well settled that “[t]he consistent criterion for determination of obviousness is
whether the prior art would have suggested to one of ordinary skill in the art that [the claimed
process] should be carried out and would have a reasonable likelihood of success viewed in light
of the prior art. [Citations omitted] Both the suggestion and the expectation of success must be
founded in the prior art, not in the applicant’s disclosure.” In re Dow Chem. Co., 837 F.2d 469,
473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988). Thus, a prima facie case of obviousness is
established by showing that some objective teaching, suggestion or motivation in the applied
prior art taken as a whole and/or knowledge generally available to one of ordinary skill in the art
would have led that person to the claimed invention as a whole, including each and every
limitation of the claims, without recourse to the teachings in appellants’ disclosure. See
generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-
Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30
(Fed. Cir. 1996); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir.
1988); Dow Chem., 837 F.2d at 473, 5 USPQ2d at 1531-32.
The appealed claims are directed to a method for coating a surface of an alloy product
using a diffusion mixture consisting essentially of aluminum, silicon and an ammonium halide
activator in the amounts specified, with the balance an inert filler. Such a method is generally
referred to as a “pack cementation method” (specification, page 1). Certain appealed claims are
drawn to a metal alloy product having an aluminum and silicon diffusion coating on at least one
surface prepared by said method. The examiner addresses only the claimed method even though
the ground of rejection involves the product claims as well.
The examiner finds that Krutenat discloses a pack cementation method for forming an
2 Answer, pages 4-6. We observe that while the examiner did not include “in view of Davis” in
stating the second ground of rejection in the answer (page 5), it is clear from page 9 of the answer
and page 2 of the final rejection (Paper No. 5) that the Davis ‘501 is part of this ground of
rejection.
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