Appeal No. 96-2708
Application 08/335,432
The reevaluation should set forth an analysis of the claims and the prior art as
required by Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (CCPA
1966) . See also MPEP 706.02(j) wherein it states:
...[A]fter indicating that the rejection is under 35 U.S.C. § 103, the examiner should
set forth in the Office action (1) the relevant teachings of the prior art relied upon,
preferably with reference to the relevant column or page number(s) and line
number(s) where appropriate, (2) the difference or differences in the claim over the
applied reference(s), (3) the proposed modification of the applied reference(s)
necessary to arrive at the claimed subject matter, and (4) an explanation why one of
ordinary skill in the art at the time the invention was made would have been
motivated to make the proposed modification.
The examiner should also be mindful of Titanium Metals Corporation v. Banner 778
F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) wherein a claimed alloy having
.3%Mo and .8%Ni was considered to have been prima facie obvious from two prior art
alloys, the first containing .25% Mo and .75%Ni and the second containing .31% and
.94%Ni. In that case, the court held that “the proportions are so close that prima facie one
skilled in the art would have expected them [the claimed and prior art alloys] to have the
same properties.”
(3) In view of our affirmance of claims 3-6 as unpatentable over Perry in view of
Sweeney and our recommendation that the examiner evaluate in any continuation
application the patentability of the appellants’ claims in light of Mafoti, we additionally
recommend that the examiner evaluate the patentability of claim 7 over the combined
teachings of Perry and Sweeney as well as over Mafoti.
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