Appeal No. 95-0112
Application 07/787,994
1992); Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138,
227 USPQ 543, 547 (Fed. Cir. 1985) (“It is impermissible to
engage in hindsight reconstruction of the claimed invention,
using the applicant’s structure as a template and selecting
elements from references to fill the gaps.”)
As a final note, we appreciate the examiner’s concerns that
there may be no difference between the claimed superplastic steel
and the steel produced using the method disclosed by Giessen. In
re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-434 (CCPA 1977)
(Where the claimed and prior art products are identical or
substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed
product). However, in the case before us, Giessen does not even
mention superplastic steel and the examiner has not established
that the product made from the process described in col. 4, lines
8-11, of the patent is, in fact, a superplastic steel. As
pointed out by the appellant, it would be fortuitous if one
happened to select the proper starting alloy and maintain the
heat treatment at the minimum temperature of 600E C (and not 1E C
more) and, thus, produce the product described in claim 1. We
8
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