Ex parte BARTGES et al. - Page 5




          Appeal No. 1996-4176                                                        
          Application No. 08/287,915                                                  

          from the claimed subject matter in the absence of tin.  It                  
          further differs from the claimed subject matter in the                      
          presence of lead as set forth supra.                                        
          The examiner relies upon the teaching of Kempf for both                     
          the omission of the lead component and the presence of tin.                 
          Kempf discloses that aluminum alloys may be machined when two               
          or more of the elements, lead, tin, thallium, cadmium or                    
          bismuth are present in the aluminum alloy.  See column 2,                   
          lines 9-12.  The examiner further relies upon the disclosure                
          of Kempf at page 1, column 2, line 54 through, page 2, column               
          1, line 5, that,                                                            
               [T]he total amount of free machining elements should                   
               not be less than about 0.05 per cent since below                       
               this amount there is scarcely any advantageous                         
               effect. We have determined that a maximum limit of                     
               about 6 per cent total of two or more of the free                      
               machining elements is sufficient for satisfactory                      
               commercial results...                                                  
               It is the examiner’s position that inasmuch as Kempf                   
          discloses the combination of two or more of the “free                       
          machining” elements selected from the group composed of lead,               
          tin, thallium, cadmium and bismuth, it would have been obvious              
          to the person having ordinary skill in the art to omit the                  
          presence of lead and include the presence of tin.  See Answer,              

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