Appeal No. 1996-1223
Application 08/218,676
sustain the rejection of all of the appealed claims under 35 U.S.C. § 103 as being unpatentable over
Witters et al. It is well settled that in order to establish a prima facie case of obviousness, “[b]oth the3
suggestion and the reasonable expectation of success must be found in the prior art and not in
applicant’s disclosure.” In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991),
citing In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988). Thus,
a prima facie case of obviousness is established by showing that some objective teaching or suggestion
in the applied prior art taken as a whole and/or knowledge generally available to one of ordinary skill in
the art would have led that person to the claimed invention, including each and every limitation of the
claims, without recourse to the teachings in appellants’ disclosure. See generally, In re Oetiker, 977
F.2d 1443, 1447-48, 24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J., concurring); In re Fine,
837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988). We agree with appellants
that the examiner has failed to carry his burden of making out a prima facie case of obviousness with
respect to the claimed invention.
There is no dispute that Witters et al. does not disclose the step of “pressing at least a portion
of said billet which forms said low aspect ratio section along a tortuous path which includes deforming
said aluminum-lithium alloy sequentially away from and toward the longitudinal mass center of the
portion of said section having a low aspect ratio and thereafter extruding said portion through an
extrusion die” as specified in appealed claim 1, similarly specified in claim 9 and embodied by a
“spreader plate which obstructs the flow of the alloy into said at least one portion” as specified in claim
14, which embodiment is shown in specification FIG. 2. The sole evidence with respect to a spreader
plate in the record on this appeal is the statement by Dr. Rioja in his declaration that “[t]he use of 4
spreader plates is known in the extrusion industry to meet design surface conditions for extrusions” (¶
8). The examiner contends that “[t]he usage of a device such as a spreader plate in a well-known
metallurgical process such as alloy extrusion would still produce improved alloy properties throughout
the alloy workpiece because . . . [Witters et al.] teaches preliminary working of the aluminum-
3The reference is listed at page 2 of the answer.
4The “Rule 132 Declaration of Roberto J. Rioja” was filed on April 27, 1995 (Paper No. 5).
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