Appeal No. 1997-0538 Application No. 08/262,168 sufficient to employ a step of determining the claimed alpha- transus temperature, see Larsen in its entirety. We find that Larsen does not recognize the importance of using a temperature below the alpha-transus temperature of a given alloy. Rather, it employs a temperature range generally applicable to the particular alloys it used, which happens to fall within the claimed temperature range. There is no reason or incentive in Larsen to determine the alpha transus temperature of a given alloy. Moreover, contrary to the examiner’s argument at page 9 of the Answer, this step is more than a mere mental step as is apparent from pages 6 through 8 of the specification. Accordingly, we reverse the examiner’s decision rejecting claims 1 through 7, 9 through 12 and 14 through 18 under 35 U.S.C. § 103 as unpatentable over the disclosure of Larsen. With respect to the examiner's rejection of product claims 8, 13 and 19 under section 103, we affirm for the reasons indicated supra. Thorp, supra; Brown, supra. In summary: 1) The rejection of claims 13 and 19 under 35 U.S.C. § 112, second paragraph, as being indefinite is reversed; 18Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 NextLast modified: November 3, 2007