Appeal No. 2003-0668
Application No. 09/530,451
essence, the examiner's reasoning is based on the principle of
inherency.
The flaw in the examiner's position, as emphasized by
appellants, is that the process of Yamao is not substantially the
same as appellants' process for making the steel wire. Whereas
Yamao exemplifies quenching and tempering steps for achieving a
steel wire having a tensile strength of at least 2,000 N/mm2,
appellants' process specifically excludes such quenching and
tempering steps. While it is the examiner's position that Yamao
"does not teach that the steel must be quenched and tempered,
only that it is possible" (page 8 of Answer, second paragraph),
appellants have properly noted that the examiner has pointed to
no specific disclosure in Yamao which indicates that the
quenching and tempering steps are optional. In relevant part,
Yamao discloses "[b]y subsequent quenching and tempering, steel
wires having the mechanical characteristics shown in Table 2 were
produced" (column 4, lines 16-18). Consequently, we cannot agree
with the examiner that the processes of Yamao and appellants are
so similar that one of ordinary skill in the art would have
reasonably expected that the wires produced by Yamao's process
would necessarily exhibit the claimed discrepancy in hardness
between the surface and inner regions. As for the examiner's
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