Appeal No. 1997-2958 24
Application No. 08/401,719
We have concluded above that an unrebutted prima facie case of obviousness was made out
with respect to the subject matter of claims 1 and 4. The evidence presented shows
that optimizing the temperature and time parameters of Komatsubara’s continuous final annealing
operation would have resulted in the same properties as the temperature and time
parameters of claims 21 and 22. We find that the examiner has established a prima facie case of
obviousness. Looking at the arguments and evidence as a whole, the evidence presented by appellants
is not sufficient to rebut the prima facie case.
The Process of Claim 2
Claim 2 requires final annealing at temperatures of 70 to 150°C for 0.5 to 12 hours. For
batch final annealing processes of 0.5 hours or longer, Komatsubara specifies using temperatures of
250° to 400°C. The batch temperature range is specified as the only option taught by Komatsubara for
batch annealing and is not just a preferred range or example. There is a hundred degree difference
between the claimed temperature range and Komatsubara’s range. For annealing processes of 0.5
hours and more, Komatsubara teaches away from the claimed temperature range. In re Malagari,
499 F.2d 1297, 1302, 182 USPQ 549, 553 (CCPA 1974) (appellant can rebut a prima facie case of
obviousness of a range by showing that the art in any material respect taught away from the claimed
range). Therefore, the rejection of claim 2 must fail.
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