Appeal No. 2002-2189 Page 3
Application No. 09/194,294
OPINION
We reverse with regard to all of the rejections.
All of the claims call for an alloy which is in either a partially-age-hardened condition T64 or
in an over-aged condition T72. Appellant argues that the aged condition is a structural characteristic
of the alloy (Brief at p. 13 and p. 17). In the rejection, the Examiner makes no specific findings of
fact with regard to the age hardened condition of the prior art alloys (Answer at p. 4). In answering
Appellant’s argument, the Examiner merely states that “appellant fails to show how the claimed
aging conditions would affect the alloy’s properties which are different from the aged alloys as
taught by the cited references.” (Answer at p. 5).
In order to establish a prima facie case with respect to a rejection made under
§ 102 or, alternatively, under § 103, the Examiner must present a reasonable basis to believe that
what is claimed is identical or substantially identical to what is taught in the prior art. In re Best, 562
F.2d 1252, 1254, 195 USPQ 430, 433-34 (CCPA 1977). Only then does the burden shift to
Appellant. Id. The Examiner, here, attempts to shift the burden without presenting the required
reasonable basis to believe a component made by the prior art is identical or substantially identical to
the component claimed (Answer at p. 5).
Moreover, the record supports Appellant’s position that the limitation on age hardened
condition is a structural difference. The independent claims refer to a “condition” not a method. The
letter “T” followed by a number is a designation, in accordance with the Aluminum Association
system, for a condition which arises in the alloy upon tempering. In the T6 condition, the alloy has
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