Appeal No. 95-4984
Application No. 08/038,369
retain a percentage of its non-heated tensile and yield
strength. Indeed, the following statement appearing at page 9
of the Examiner's Answer totally undermines the examiner's
finding of non-enablement: "The advantages of gathering
experimentally obtained data, whether it be pre-process, on-
line or post-process, and adjusting the operational parameters
to better achieve the desired characteristics of the product
is [sic, are] also well known in the art and would be within
the limits of routine experimentation of cause effective
variables" (emphasis added). Accordingly, since the examiner
has failed to make out a prima facie case of non-enablement,
we must reverse the examiner's rejection under § 112, first
paragraph.
We will sustain the examiner's rejection of claim 15
under 35 U.S.C. § 103 for essentially those reasons expressed
in the Answer, which we incorporate herein. We add the
following primarily for emphasis.
The main thrust of appellants' argument for patentability
is that whereas the appealed "claim is directed to a process
by which the metal article does not lose an unacceptable
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