Appeal No. 1997-0377
Application 08/151,808
been inherently possessed” by the alloys described in either of Decker or Enomoto. See the
answer at page 5.
Respecting the examiner's finding of inherency, appellants point out that to the extent the
prior art references disclose the claimed properties, Decker discloses an alloy having a
-6
thermal expansion of 10.08 x 10 /EC which is a value substantially higher than the thermal
expansion coefficient of appellants' claimed alloy. Similarly, with respect to the examiner's
alternatively relied upon “primary reference” to Enomoto, appellants point out that the alloys
disclosed in this reference possess a tensile strength of no more than
2
100 kgf/mm , values which are significantly lower than the tensile strength recited in the instant
claims. See the brief at page 11. Thus, the objective evidence in the record before us does
not support the examiner's contention that the herein claimed properties would have been
inherently possessed by the prior art alloys.
Respecting the examiner's “overlapping” alloy composition arguments, the examiner
has simply not come to grips with the specific teachings in the relied upon prior art references
that, when logically combined, would lead one away from, inter alia, the use of carbon in an
alloy in the herein claimed range. Compare the brief at pages 9 and 14.
For the above reasons as well as the additional reasons set forth in appellants' briefs,
we agree with appellants that the examiner has failed to meet his burden of establishing a
prima facie case of obviousness for the subject matter defined by the appealed claims.
4
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007