Appeal 2007-1529
Application 10/385,722
the time of the invention to employ an alloy with crystal grain sizes
corresponding to the claim 1 requirements in the method of EP ‘710 with the
expectation of improved formability properties in the final shaping (forging)
of the alloy (Answer 5 and 6). Finally, the Examiner contends that the
claimed further forging would have been taught or suggested by the forging
of EP ‘710. In this regard, the Examiner’s position appears to be that one
having ordinary skill in the art would have understood that the use of more
than one forging step is obviously or implicitly involved in the shaping of a
metal alloy to a desired final shape.
Thus, the principal issues raised in this appeal with respect to the
Examiner’s obviousness rejection of representative claim 1 are: (1) Have
Appellants identified reversible error in the Examiner’s obviousness
rejection based on the argued unobviousness of the grain sizes recited in
representative claim 1; and/or (2) Have Appellants identified reversible error
in the Examiner’s obviousness rejection based on the argued unobviousness
of the “further forging” limitation of representative claim 1?
We answer both questions in the negative and affirm the Examiner’s
obviousness rejection with respect to representative claim 1.
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) any secondary considerations. Graham v.
John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). “[A]nalysis
[of whether the subject matter of a claim is obvious] need not seek out
precise teachings directed to the specific subject matter of the challenged
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013