Appeal 2007-1529
Application 10/385,722
representative claim on which we decide this appeal with respect to the
Examiner’s obviousness rejection of claims 8-13, and 30-34.3
Appellants maintain that the AM/AZ alloys of independent claim 8
are terms of art and require a magnesium alloy free of non-trace amounts of
calcium. Hence, Appellants assert that the applied EP ‘710 and EP ‘901
references, which references disclose alloys including at least 0.5 percent
calcium, do not teach or suggest a method corresponding to the claim 8
method. Moreover, Appellants contend that calcium is a critical component
of the alloys of EP ‘710 and EP ‘901. Hence, one of ordinary skill in the art
would not have been led to employ an alloy substantially free of calcium as
a substitute for the calcium-containing alloys of EP ‘710 and EP ‘901.
The Examiner, on the other hand, contends that there is no persuasive
evidentiary support for the proposition that AM or AZ alloys exclude
calcium (Answer 8).
Hence, the dispositive issue raised by Appellants’ opposition to the
Examiner’s obviousness rejection of representative claim 8 can be framed as
a question as follows: Whether Appellants have established that
representative claim 8 excludes non-trace amounts of calcium in the
magnesium alloy employed in the claimed method by designating the alloy
as “an AZ or an AM magnesium alloy” (cl. 8)? We answer that question in
the negative and affirm the Examiner’s obviousness rejection of claims 8-13
and 30-34.
3 Arguments not made in the Briefs are waived. See 37 C.F.R.
§ 41.37(c)(vii) (2006).
11
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: September 9, 2013