Appeal No. 95-2315
Application 07/917,670
et al.3 (answer, pages 5-9) because we agree with appellants that any combination of the admitted state
of the art and the applied references would have failed to reasonably suggest the claimed invention as a
whole to one of ordinary skill in this art. See, e.g., In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). We observe that appellants have admitted that face contact seals having first
(“hard material”) and second (“carbonaceous material”) members wherein the first member was coated
with “[c]onventional type coatings of 20[80Ni20Cr] + 80 [Cr. Carbide]” for “mating against carbon
[second member]” were known at the time the claimed invention was made (specification, pages 1 and
9; principal brief, page 5).4 We are of the view that there are two differences between the claimed face
seals and the admittedly old face seals: (1) the first member of the claimed face seals has a chromium
carbide-age hardened nickel base alloy coating,5 while the first member of the admittedly known face
seals has a coating of 20[80Ni20Cr] + 80 [Cr. Carbide]; and (2), the appealed claims require the heat
treatment of a chromium carbide-age hardenable nickel base alloy coating in order to obtain the
chromium carbide-age hardened nickel base alloy coating and there is no evidence of record that the
20[80Ni20Cr] + 80 [Cr. Carbide] coating is heat treated.
We fail to find any reasonable suggestion and reasonable expectation of success in the
references applied by the examiner, either separately or combined, to substitute the age hardenable
nickel base alloy binder, such as Inconel 718 (appealed claim 4), for the 80Ni20Cr alloy binder in a
face seal coating to obtain a chromium carbide-age hardenable nickel base alloy coating and then to
heat treat this coating to obtain chromium carbide-age hardened nickel base alloy coating. In re
Vaeck, 947 F.2d 488, 493-95, 20 USPQ2d 1438, 1442-44 (Fed. Cir. 1991); In re Dow Chem. Co.,
837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988). While Wolfla et al. (e.g., page 778)
2 See, e.g., appealed claim 1 in the amendment of March 26, 1993 (Paper No. 11).
3 The references relied on by the examiner with respect to the grounds of rejection are listed at page 4
of the answer. We refer to these references in our opinion by the name associated therewith by the
examiner.
4 We note that an example of the latter coating on an Inconel 718 substrate is disclosed in Routsis (col.
3, lines 6-14).
5 The term “age hardened nickel base alloy” is defined in appellants’ specification (page 5, lines 7-11;
principal brief, page 5). In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir.
1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
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