Appeal No. 2002-2189 Page 4
Application No. 09/194,294
maximum or peak strength (Warren at col. 6, ll. 1-2). A partially- or under-aged alloy does not have
maximum strength (specification at p. 3, l. 36). It follows that alloys with different “T” designations
have different properties and, thus, are different from each other.
None of the references describe an alloy of the composition claimed that is in the T64 or T72
condition. Warren either naturally ages or artificially ages to T6 strength (col. 6, ll. 1-2).
Schwellinger does not specify the condition achieved upon artificial age hardening (Examples 2E,
4E, and 5E, col. 2, ll. 31-46). Bergsma describes alloys which can be aged by any of the typical
under-aging or over-aging treatments, but Bergsma does not specifically describe aging to T64 or
T72 condition.
There is no adequate basis to believe that the prior art alloys are identical or substantially
identical to those claimed. Under such circumstances, there is insufficient evidence to support a
rejection based on “inherency” under 35 U.S.C. § 102, or on “prima facie obviousness” under
35 U.S.C. § 103. Best, 562 F.2d at 1254, 195 USPQ at 433-34.
The Examiner also provides an additional obviousness rationale. According to the Examiner,
“treating known alloys for the known aging conditions is contemplated within [the] ordinary skill [of
the] artisan.” (Answer at p. 6). This may be true, but it is alone not enough to establish that one of
ordinary skill in the art would have had a reason or motivation to age harden the alloys of the
references to, specifically, either the T64 or the T72 condition. None of the references, when taken
by themselves, provide a suggestion to so under- or over-age an alloy of the claimed composition.
Nor has the Examiner provided an objective basis supporting a finding that knowledge generally
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