Appeal No. 1997-2958 19
Application No. 08/401,719
In the brief, at page 19, appellants point to lots 2-4, 8, 10 and 13 of Table C. Appellants state
that these lots subject the claimed alloy composition to processing parameters outside appellants’ final
annealing parameters and the resulting plates do not have the claimed non-recrystallized crystal
structure, the claimed yield strength ratio before and after annealing or the 90° critical bending radius.
There is no explanation as to how the final annealing temperatures and times inter-relate with the crystal
structure, yield strength ratio before and after annealing or the 90° critical bending radius. There is also
no explanation of how the data is commensurate in scope with the claims. Ex parte Gelles, 22
USPQ2d at 1320. Instead appellants seem to argue that the Komatsubara plate does not inherently
possess the claimed properties and thus there is no prima facie case.
We have found a prima facie case, not based on inherency, but based on the premise that one
of ordinary skill in the art would optimize the times and temperatures of the final annealing step of
Komatsubara. We note appellants’ lot 6 is both within Komatsubara’s processing parameters and
appellants’ processing parameters. This lot, in fact, does possess appellants’ claimed yield strength
ratio and bending property. It also has a non-recrystallized crystal structure even though it has been
annealed under conditions meeting Komatsubara’s continuous annealing time and temperatures.
Assuming that there is a correlation between the annealing parameters and the bending radius as
appellants argue, then if one follows the teaching of Komatsubara and optimizes the annealing
temperature and time for superplastic forming so that recrystallization during superplastic forming is
insured, the properties that are desirable for superplastic forming would also be optimized.
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