Appeal No. 96-2056
Application No. 08/210,139
and the claimed process is not a “patentable distinction”
(Answer, page 4), the fact that the claims on appeal are
directed to a process does not mean that the examiner can
ignore differences in the composition of the material involved
in the process. In re Ochiai, 71 F.3d at 1572, 37 USPQ2d at
1132.
For the foregoing reasons, we determine that the examiner
has not established a prima facie case of obviousness.
Accordingly, the rejection of claims 11-14 under 35 U.S.C. §
103 as unpatentable in view of the teaching of Masumoto ‘196
is reversed.
B. The Rejection pursuant to 37 CFR § 1.196(b)
The Masumoto ‘935 patent has a different inventive entity
than the present application and thus is available as prior
art under § 102(e). Masumoto ‘935 discloses alloy4
compositions within the scope of General Formula (I) as
recited in the claims on appeal (see the abstract or column 1,
lines 42-63). Example 3 in column 6 of Masumoto ‘935 appears
4The U.S. filing date of Masumoto ‘935 is June 22, 1990,
while appellants claim an effective filing date of at best May
31, 1991, the date their foreign priority document was filed
in Japan.
6
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