Appeal No. 1996-1573
Application No. 08/186,160
Appealed claims 1-4 and 8-12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Watts. Claims 1, 3, 4, 8, 10 and 12 stand rejected under 35 U.S.C. §
103 as being unpatentable over Watanabe or British '694. Claims 1, 2, 8 and 9 stand
rejected under 35 U.S.C. § 103 as being unpatentable over Hales. Also, claims 5-7 stand
rejected under 35 U.S.C. § 103 as being unpatentable over Watts, Watanabe (or British
'694) or Hales in view of Sawtell.
Upon careful consideration of the opposing arguments presented on appeal, we
concur with appellants that the examiner has not established a prima facie case of
obviousness for the claimed subject matter. Accordingly, we will not sustain the examiner's
rejections.
The examiner acknowledges at page 4 of the answer that "[t]he prior art differs from
the claims on appeal in that the prior art is silent with respect to the particle size of
any intermetallic precipitates in the alloys, or to the grain size of the alloys." Nevertheless,
it is the examiner's position that "[b]ecause the composition and processing history of the
Watts, Watanabe, or Hales alloys may be the same as those of the alloys of the appealed
claims, a prima facie case of obviousness has been established therebetween." (page 4
of answer).
It is well settled that when a claimed composition reasonably appears to be
substantially the same as a composition disclosed by the prior art, the burden is
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