Ex parte SAWADA et al. - Page 6




          Appeal No. 98-2457                                                          
          Application No. 08/851,312                                                  


          According to the examiner (answer, pages 3-5),                              
                        Jin et al. discloses a process for                           
                    manufacturing a superconducting elongated                         
                    article, comprising the steps of:                                 
                         filling a silver pipe with material powder                   
                    of a superconducting compound oxide;                              
                         subjecting the silver pipe filled with the                   
                    material powder to first and second plastic                       
                    deformation steps, thereby reducing the cross                     
                    section of the silver pipe and producing a                        
                    composite body;                                                   
                         sintering the material powder filled in the                  
                    silver pipe; and then                                             
                         slowly cooling the composite body.  (See                     
                    the final paragraph of column 5 and the initial                   
                    paragraph of column 6).                                           
                         Jin et al. fails to expressly disclose the                   
                    following: 1) that the first plastic deformation                  
                    step is "cold-plastic deformation", and the                       
                    second plastic deformation step is "hot-plastic                   
                    deformation"; and 2) controlling the cooling                      
                    rate of the cooling step to be "less than                         
                    50EC/min".                                                        
                         Regarding 1), in column 5, lines 59-65, Jin                  
                    et al. states that the powder-filled tube is                      
                    subjected to "cross section-reducing steps . . .                  
                    either at room temperature or at . . . elevated                   
                    temperatures".  Accordingly, one having ordinary                  
                    skill in the art would have found it obvious to                   
                    have the cross section-reducing steps be all of                   
                    one type, i.e. "hot" or "cold", or any                            
                    combination thereof, depending on the results                     
                    sought to be attained with regard to the oxide                    
                    powder or the silver pipe.  Alternatively, the                    
                    exact type and sequence of plastic deformation                    
                    steps performed by Appellant are deemed to be                     
                    matters of design choice, because such type and                   
                    sequence per se solve no stated problem nor                       
                    serve any apparent purpose.  The significance of                  
                    performing cold- plastic deformation and then                     
                                          6                                           





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