Appeal No. 1997-2958 14
Application No. 08/401,719
of at least 1°C/sec. Continuous heating ovens operate continuously hot. Placing a 2 mm aluminum
alloy plate, such as that taught by Komatsubara, in an oven preheated to 35 to 550°C as taught by
Komatsubara would necessarily result in heating the 2 mm plate at a speed of at least 1 °C/sec.
Likewise, removing the 2 mm plate to ambient air would necessarily result in cooling at a speed of at
least 1 °C/sec. The speeds naturally result from the teaching of Komatsubara. Under the principles of
inherency, a patent cannot be obtained if the prior art necessarily functions in accordance with, or
includes, the claimed limitations. Mehl/Biophile International Corp. v. Milgraum, 192 F.3d 1362,
1365, 52 USPQ2d 1303, 1305 (Fed. Cir. 1999); In re Best, 562 F.2d 1252, 1254-55, 195 USPQ
430, 433 (CCPA 1977). Appellants have presented no evidence that the heating and cooling speeds
are not inherent in Komatsubara.
Claim 4 as a Whole
Directing our focus to claim 4 as a whole, we find that Komatsubara teaches the claimed alloy
composition. Komatsubara also teaches casting, rolling and annealing. The rolling rate and annealing
parameters overlap the claimed ranges and are optimizable as a matter of routine experimentation. The
claimed temperature elevating and cooling speeds inherently result. We find that the examiner has
established a prima facie case of obviousness with respect to the subject matter of claim 4. The
burden is on applicants to show that any differences are not merely normal expected variations but
would be unexpected by those of ordinary skill in the art. See In re Freeman, 474 F.2d 1318, 1324
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