Appeal No. 1996-0898
Application 08/083,838
ordinary skill in this art, we must agree with appellants (principal brief, pages 27-28; reply brief, pages
7-8) that claim 8 would not include a step or steps involved with the replacement of the naturally
occurring oxide film by an oxide layer formed by a pretreatment step, even in view of the transitional
term “comprising,”4 and that claim 8 specifies that the lubricant is applied on the surface of the aluminum
“alloy plate having a naturally occurring oxide film,” contrary to the position of the examiner (second
supplemental answer, page 4).
Upon carefully considering the combined teachings of the applied references to the limitations of
appealed claim 8, we agree with appellants’ arguments (principal brief, pages 25-26) that this
combination of references, and specifically the teachings of Marwick, differs from the claimed method in
the specific teaching that the “aluminum plate to be pretreated to form a strongly bonded artificial
surface layer thereon” (id., page 25; see Marwick, e.g., col. 1, lines 16-18, col. 4, lines 4-6 and 29-52,
and Example 2). Thus, we find that the issue raised by the difference pointed out by appellants is
whether one of ordinary skill in this art would have would reasonably modified the method thus taught
by the combined teachings of the applied references by applying the lubricant and subsequently the
adhesive of Saito et al. to the surface of “an Al alloy plate having a naturally occurring oxide film” rather
than replacing that oxide film with an artificial oxide film as taught in Marwick (id.). However, we
further find that the examiner does not recognize this difference in the statement of the ground of
rejection (second supplemental answer, pages 2-3) and does not provide any evidence or scientific
explanation in the second supplemental answer with respect to this issue in response to appellants’
arguments (pages 3-4).
Accordingly, on this record, we reverse the examiner’s ground of rejection because it is
inescapable that the combined teachings of the references as applied by the examiner taken as a whole
would not have resulted in the claimed method encompassed by the appealed claims. Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1050-54, 5 USPQ2d 1434, 1438-41 (Fed. Cir.). Thus, it is
4 See In re Baxter, 656 F.2d 679, 686-87, 210 USPQ 795, 802-03 (CCPA 1981) (“As long as one
of the monomers in the reaction is propylene, any other monomer may be present, because the term
‘comprises’ permits the inclusion of other steps, elements, or materials.”)
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