Appeal No. 2002-1489
Application 09/173,456
As an initial matter, we find that, when considered in light of the written description in
the specification as interpreted by one of ordinary skill in this art, see, e.g., In re Hyatt, 211 F.3d
1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55, 44
USPQ2d 1023, 1027 (Fed. Cir. 1997), In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966
(Fed. Cir. 1985), the plain language of all of the appealed claims, as represented by appealed
claim 1, specifies that the “amorphous non-laminar” phosphorous containing alloy is
characterized in product-by-process format with the limitations that the product is “produced by
electrodeposition . . . while maintaining the cathode efficiency at a range of between about 4 and
10 mg/amp. min.,” and is further “characterized by the absence of a plurality of thick, parallel
lines or regions in cross-sectional photomicrographs of the alloy after electrodeposition.”
It is well settled that in order to establish a prima facie case of obviousness of the
appealed product-by-process claims, the examiner must show that the phosphorous containing
alloy prepared from the materials of each of Gamblin and Myers by the method of Ratzker would
reasonably appear to be identical or substantially identical to the phosphorous containing alloys
having the characteristics, including preparation by electrodeposition at the required cathode
efficiency, specified in these appealed claims. See generally, Thorpe, supra; In re Best, 562 F.2d
1252, 1254-56, 195 USPQ 430, 432-34 (CCPA 1977); see also In re Skoner, 517 F.2d 947, 950,
186 USPQ 80, 82 (CCPA 1975) (“Appellants have chosen to describe their invention in terms of
certain physical characteristics . . . . Merely choosing to describe their invention in this manner
does not render patentable their method which is clearly obvious in view of [the reference].
[Citation omitted.]”); cf. In re Spada, 911 F.2d 705, 708-09, 15 USPQ2d 1655, 1657-58 (Fed.
Cir. 1990) (“The Board held that the compositions claimed by Spada ‘appear to be identical’ to
those described by Smith. While Spada criticizes the usage of the word ‘appear’, we think that it
was reasonable for the PTO to infer that the polymerization by both Smith and Spada of identical
monomers, employing the same or similar polymerization techniques, would produce polymers
having the identical composition.”).
Here, the examiner has merely alleged that the result of using the method of Ratzker to
2 Answer, pages 3-7. The examine withdrew the ground of rejection of appealed claims 1, 6, 7,
42 and 43 under 35 U.S.C. § 112, second paragraph (id., page 2).
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