Appeal No. 1996-3770 Page 11
Application No. 08/412,834
Inherency may not be established by probabilities or
possibilities. In re Oelrich, 666 F.2d 578,581, 212 USPQ 323,
326 (CCPA, 1981). Here, the examiner has not shown that the
claimed 180° R/T values would have necessarily resulted when
following the prior art teachings of alloy treatment.
In addition, appellants have furnished evidence (Ikushima
declaration) that the only reference (Ikushima patent) relied
upon by the examiner that discloses R/T values for the treated
alloys are reported values based on 90° R/T tests, not 180° R/T
tests as claimed herein and would be unfavorably comparable to
the claimed values insofar as suggesting the claimed process.
The examiner's reference to claim 1 of the Ikushima patent
(answer, pages 9 and 10) does not serve to invalidate this
evidence furnished in the Ikushima declaration.
As a final matter, we note that appellants have submitted
declaratory evidence (Goldstein and Ikushima declarations)
together with the test results reported in the specification
regarding the claimed formability properties. Expert opinion
(Goldstein and Ikushima declarations) indicates that the
claimed formability properties would have been unexpected to a
skilled artisan. The examiner's comments at page 10 of the
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