Appeal No. 1996-3770 Page 9
Application No. 08/412,834
conditions as claimed herein to form an alloy having the
claimed formability properties. In this regard, we note that
Sawyer is concerned with the electrical conductivity properties
of the alloy as well as a variety of mechanical properties such
as strength and hardness (column 1, lines 42+). Sawyer does
not disclose the specific formability properties of the alloy
as called for in the appealed claims.
The examiner additionally relies on Minoura in combination
with either Sawyer or Ikushima in a separately stated rejection
and further combined with Wikle with regard to several
dependent claims. However, these references' teachings do not
cure all of
the above-noted deficiencies. Neither Minoura or Wikle suggest
making an alloy with the formability properties required by the
claims. In this regard, the examiner has not adequately
explained how the teachings of Minoura regarding the treatment
of alloys of copper and beryllium to obtain excellent
mechanical strength and electrical conductivity properties
would have suggested a modification of either the Sawyer or
Ikushima process to arrive at the claimed invention. It is not
clear to us why a skilled artisan would selectively pick a
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