Appeal No. 1996-1223
Application 08/218,676
lithium alloy as a useful technique for obtaining the broad range of alloy properties depicted in Fig. 2
of the patent” (answer, page 7). We cannot agree with the examiner’s position because, on this record,
the examiner has not provided any evidence and/or scientific reasoning with respect to why one of
ordinary skill in this art would have been motivated by the disclosure in Witters et al. to “preliminarily
work the ingot without extruding to shape” (col. 5, lines 34-36) to modify the method of forming low
aspect ratio aluminum-lithium extrusions disclosed in the reference by using a spreader plate, or any
other means, to form a “tortuous path” having the characteristic stated in the appealed claims, prior to
the extrusion die with the reasonable expectation of arriving at the methods of the appealed claims.
Thus, it is manifest that the only direction to appellants’ claimed invention as a whole on the record
before us is supplied by appellants’ own specification. Fine, supra; Dow Chem., 837 F.2d at 473, 5
USPQ2d at 1531-32.
The examiner’s decision is reversed.
Reversed
MARC L. CAROFF )
Administrative Patent Judge )
)
)
)
JOHN D. SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
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