Appeal No. 1996-1573
Application No. 08/186,160
properly on the applicant to prove that the prior art composition does not necessarily or
inherently possess characteristics or properties attributed to the claimed composition. In
re Spada 911 Fd.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); In re Best 562
Fd.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). However, before this burden is
placed upon the applicant, the examiner shoulders the initial burden of providing a rational
basis for concluding that the claimed composition and the prior art composition appear to
be substantially the same. A typical way for the examiner to satisfy this burden is to show a
close correspondence between the processes employed by the applicant and the prior art
to formulate the compositions.
In the present case, since the examiner acknowledges that the applied references
do not disclose the claimed properties of appellants' superplastic aluminum alloy, the
examiner must demonstrate that the prior art processes for making the disclosed
superplastic aluminum alloys are essentially the same as the process utilized by
appellants. However, the examiner's answer is totally devoid of such requisite analysis.
Whereas appellants contend that the claimed properties of the alloy are a result of the
disclosed steps for homogenizing, first-working, precipitation and second-working, the
examiner has failed to show that the processes of Watts, Watanabe and Hales for making
the aluminum alloys are sufficiently similar to appellants' process to
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