Appeal No. 96-2056
Application No. 08/210,139
in composition undergoing treatment, the processes disclosed
in Masumoto [’196] are described as being applicable to alloys
of the same family as those recited in General Formula (I) of
the appealed claims”. Second, the examiner states that “the
claims on appeal are drawn to a process, and each step of the
process of the appealed claims is recited and exemplified in
the Masumoto [’196] reference.”
A proper analysis under § 103 requires consideration of
whether the prior art would have suggested to those of
ordinary skill in the art that they should carry out the
claimed process and whether the prior art would also have
revealed that in so carrying out, those of ordinary skill
would have a reasonable expectation of success. In re Vaeck,
947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
Appellants have argued that there is no indication in Masumoto
‘196 that alloys having a composition different from those
taught by the reference would have any advantageous properties
(Brief, page 6). Appellants also submit that Masumoto ‘196
does not disclose and would not have suggested that the
process parameters of Example 2 are applicable to other alloys
outside of the scope of the reference (Reply Brief, page 1).
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