Appeal No. 97-2220
Application 08/250,607
phosphorous deoxidized copper alloys. Therefore, we did no more in our opinion than further note the
teachings of Hensel with some additional particularity.
Thus, upon reconsidering our decision to affirm the examiner’s grounds of rejection in light of
appellants’ arguments advanced in their request, we cannot discern that we have changed the thrust of
the examiner’s grounds of rejection, or, in other words, the evidentiary scheme that we have described
in our opinion with the amplified reasoning set forth therein based on facts of record does not differ in
substance from that set forth by the examiner in his answer. Indeed, it is apparent from appellants’
evidence of nonobviousness based on Comparative Examples of phosphorous deoxidized copper alloys
and the other arguments set forth in their principal and reply briefs, that they had ample “fair
opportunity” to react to the thrust or evidentiary scheme of the rejections based on Hensel even in view
of our opinion. Kronig, supra; cf. Boon, supra; Waymouth, supra. We note in this respect that while
appellants did advance the argument that Hensel does “not disclose restricting the oxygen amount to less
than or equal 100 ppm” (principal brief, page 8), they also relied on Comparative Examples containing
an amount of oxygen in this range as evidence of nonobviousness with respect to the teachings of the
applied prior art as we observed above.
We have not overlooked appellants’ argument that manganese deoxidized copper rather than
phosphorous deoxidized copper would be formed following the disclosure of Hensel at col. 2, lines 7-
11 (request, page 5). In support of their argument, appellants submit the attachment to the request
without explaining the significance thereof with respect to their argument vis-à-vis the cited disclosure in
Hensel:
A slight excess of phosphorous above the amount required to form the intermetallic
compound of manganese phosphide with the manganese will ordinarily serve as a deoxidizing
agent during the production of the alloy.
The difficulty that we have with appellants’ argument as supported is that it reasonably would
have appeared to one of ordinary skill in this art that in following the cited teaching of Hensel there
would have been little, if any, manganese to serve as the deoxidizing agent, thus leaving that function to
the “slight excess of phosphorous” available for that purpose. We note that it is well settled that the
burden of establishing the significance of evidence in the record, with respect to unexpected results or
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