Appeal 2007-1529
Application 10/385,722
to Appellants’ disclosed forging conditions. Moreover, Kojima teaches that
fine crystal grain sizes can be produced during warm rolling (forging) steps
due to dynamic recrystallization (Kojima 9).
Consequently, we do not find Appellants’ arguments persuasive of
any reversible error in the Examiner’s obviousness determination with
respect to the representative claim 1 method. In this regard, we note that one
of ordinary skill in the art would have been led to employ grain sizes and
forging conditions in EP ‘710 that avoid cracking of the forged product (EP
‘710, ¶ 0084). Thus, Appellants’ comments in the Briefs concerning their
findings as to how to avoid cracking are not persuasive of reversible error in
the rejection before us. Moreover, we note that representative claim 1 is not
limited to a particular strain rate or crystal grain size exclusive of those
suggested by EP ‘710 in combination with Kojima. Furthermore,
Appellants’ contentions concerning more than one forging step are
unavailing in light of our finding that the use of multiple forging steps is
well-known in the shaping of alloys. It follows that the Examiner’s prima
facie obviousness conclusion as to claims 1-7, 23, and 25-29 has not been
shown to be in error, on this record.
Concerning Appellants’ assertion of unexpected results/criticality for
the claimed grain sizes (Reply Br. 4-6), we note that Appellants bear the
burden to establish the factual basis for unexpected results for the claimed
invention sufficient to rebut the prima facie case of obviousness established
by the Examiner. See, e.g., In re Klosak, 455 F.2d 1077, 1080, 173 USPQ
14, 16 (CCPA 1972).
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