Appeal No. 1997-2958 23
Application No. 08/401,719
obvious from a product of the prior art, the claim is unpatentable even though the prior product was
made by a different process." In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir.
1985) (citations omitted). Komatsubara, as acknowledged by appellants, teaches omitting the final
annealing step altogether. Appellants acknowledge that a non-recrystallized crystal structure is
obtained when the final annealing step is omitted . No evidence presented by appellants lead us to6
believe that the product obtained when the annealing step is omitted is different than the product
obtained when final annealing is undertaken in the temperature range of claim 20. Claim 20 does not
require the product to have any particular yield strength ratio or 90° critical bending radius. Appellant
does not present us with comparative data commensurate in scope with this particularly broad claim.
We find that the examiner has established an unrebutted case of prima facie obviousness with respect
to the subject matter of claim 20.
Dependent Claims 21 and 22
Claims 21 and 22, which are of near identical scope, further narrow product-by-process claim
20 by incorporating the final annealing parameters of claim 2 and by specifying that the plate have a 90°
critical bending radius # 7.5 times a thickness of the plate and that the plate have a yield strength ratio
before and after annealing of $ 70%.
6The brief at page 15 lines 8-12 states: “the fact that Komatsubara discloses the final annealing
step as being ‘optional’ ... is expressly a suggestion that the final annealing step should be omitted when
unrecrystallized crystal structure is desired.”
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