Appeal No. 1996-4176
Application No. 08/287,915
page 5. It is further reasoned by the examiner that since
Kempf discloses that the five machining elements may be used
in amounts overlapping the alloy ranges of the claimed subject
matter, the claimed subject matter is thereby rendered obvious
to the person having ordinary skill in the art. Accordingly,
the examiner submits that the teachings of the admitted prior
art in view of Kempf are sufficient to establish a prima facie
case of obviousness. We disagree.
The examiner has presented no rationale as to why one
having knowledge of the admitted prior art and Kempf would
choose to include tin and exclude lead. Nor has any rationale
been proposed why the inclusion of tin should be within the
narrow range set forth by appellants in the claimed subject
matter. See In re Sebek, 465 F.2d 904, 907, 175 USPQ 93, 95
(CCPA 1972). Furthermore, the examiner must show
reasons that the skilled artisan, confronted with the same
problem as the inventor and with no knowledge of the claimed
invention, would select the elements from the cited prior art
references for combination in the manner claimed. We
determine that there is no reason, suggestion, or motivation
to combine the references in the manner proposed by the
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007