Appeal No. 95-0112
Application 07/787,994
treatment step and [a] heat treatment temperature [which] overlap
those recited by the claims.” Answer, p. 3. The examiner
concludes that it would have been obvious to one of ordinary
skill in the metallurgical art to have selected the overlapping
portion of the subject matter disclosed by the reference and to
arrive at the claimed invention. Answer, p. 4, lines 2-7.
In response the appellant urges that Giessen does not teach
or suggest (i) heating an austenitic steel at 300E to 600E C to
transform it into a mixture of ferrite and carbide, and (ii) the
formation of a superplastic steel. Brief, p. 5, para. 1.
According to the appellant,
the microstructure of Giessen et al.’s products vary with
the heat treatment temperature and the specific starting
composition (col. 5, lines 1 through 3). Thus, even if it
were possible, it would be fortuitous if one were to select
from the teachings of Giessen et al. the combination of heat
treatment temperatures and starting compositions need to
form the fine-grained, rounded microstructure required for
superplasticity. The mere possibility of such fortuitous
selection, if possible, hardly amounts to an inherent or
prima facie teaching of the present invention [Brief, p. 5,
para. 2].
We agree.
It is well established that the PTO bears the initial burden
of establishing a prima facie case of obviousness. In re Fine,
837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
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