Appeal No. 1997-2958 21
Application No. 08/401,719
Appellants’ own lots 6 and 12 perform annealing within the parameters of Komatsubara, 210°C x 0
sec. and 220°C x 0 sec. respectively, and result in non-recrystallized crystal structure.
The totality of the evidence suggests that the recrystallization temperature is somewhere
between 220° and 350°C. Annealing below the recrystallization temperature would result in a non-
recrystallized crystal structure. A large portion of Komatsubara’s final annealing temperature range
encompasses temperatures below the recrystallization temperature. Optimization of the temperature
would result in non-recrystallized structure. Looking at the claim as a whole, we find that the examiner
has established a prima facie case of obviousness with respect to the subject matter of claim 1.
Appellants have not rebutted the prima facie case. Appellants state that proof that
Komatsubara’s alloys do not possess the bending radius and yield strength ratio is contained in Tables
A, B, and C. Indeed, lots 2, 3, 10, and 12 of Table C all subject alloys of Komatsubara’s composition
to annealing conditions meeting Komatsubara’s ranges and result in properties outside the claimed
parameters. Therefore, appellants have come forward with proof that Komatsubara’s alloys do not
necessarily possess the properties claimed. Cf. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
However, this does not end the analysis.
We have found that routinely experimenting with the final annealing temperatures and times to
obtain optimal superplastic forming properties would lead one of ordinary skill in the art to an alloy with
the claimed properties. While the properties may not be inherent, Komatsubara does indicate that the
overall intent of Komatsubara’s process is to obtain a plate optimized for superplastic forming.
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