Ex parte KURODA et al. - Page 7


                 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--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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