Appeal No. 96-2056
Application No. 08/210,139
The examiner points to no teaching in Masumoto ‘196 in support
of the statement that the alloys of the reference and the
appealed claims are “alloys of the same family” or have common
characteristics or properties. The examiner has not advanced
any evidence or reasoning which supports his position that one
of ordinary skill in this art would have reasonably expected
that the addition of yttrium or a lanthanide element to the
alloy composition of Masumoto ‘196 would have been successful
in the process described by the reference.
Masumoto ‘196 does teach that the alloys of his invention
can contain other elements in minor amounts but fails to
disclose or teach yttrium or any lanthanide elements (column
4, lines 51-55). Although Masumoto ‘196 does teach the steps
of the process recited in the claims on appeal using another
alloy, the examiner has failed to point to any disclosure or
teaching in this reference which defines a class of alloys
which would have suggested using the specific alloys recited
in the claims on appeal. In re Ochiai, 71 F.3d 1565, 1570, 37
USPQ2d 1127, 1131 (Fed. Cir. 1996).
With regard to the examiner’s second reason for
concluding that the difference between the referenced process
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