Appeal No. 1996-1568
Application No. 08/235,235
from a given set of circumstances is not sufficient. In re
Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981)
taken from Hansgirg v. Kemmer, 102 F.2d 212, 214, 40 USPQ 665,
667 (CCPA 1939).
In summary, the steps and consequences required by the
appealed claims, and in particular the heat treating step and
its diffusion/resistivity consequences of the independent
claims on appeal, are not taught or suggested by Jones and do
not inherently and necessarily result from the operation of
Jones’ process. It follows that we cannot sustain the § 103
rejection of claims 1 through 4, 21 through 23 and 25 through
28 as being unpatentable over Jones. For analogous reasons,
we also cannot sustain the corresponding rejection of claim 5
as being unpatentable over Jones in view of the Maeda patent
particularly in light of the fact that Maeda has not been
relied upon by the examiner for supplying any of the
previously discussed deficiencies of Jones.
The decision of the examiner is reversed.
REVERSED
5
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