Appeal No. 1996-3859
Application No. 08/278,910
the same properties (answer, pages 5 and 13). A diameter of
1.2 mm is 20% lower than a diameter of 1.5 mm, and appellants
have challenged the examiner’s assertion that wires with both
diameters have the same properties (brief, page 16).
Appellants have requested evidence in support of the
examiner’s assertion. See id. The examiner, however, has not
provided such evidence, and the examiner’s mere speculation is
not a sufficient basis for a prima facie case of obviousness.
See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968); In re Sporck, 301
F.2d 686, 690, 133 USPQ 360, 364 (CCPA 1962). Accordingly, we
reverse the rejection of claim 38.
Claim 19 requires further cooling during a transformation
stage by stable film boiling and air cooling. Either all or
the major part of the transformation in the Vanneste ‘472
process takes place during the air cooling step (col. 5, lines
45-51; col. 6, lines 28-36). There is no additional water
cooling during a transformation stage.
The examiner argues that merely repeating a known step
which produces a final product known to be produced when the
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