Appeal No. 1998-1573
Application 08/599,840
metal article must be heated to the extent necessary to increase the corrosion resistance of the coated
metal article, it reasonably appears to us that a hardened surface would be more corrosion resistant than
a softer metal surface in the absence of evidence to the contrary.
Thus, we are of the opinion that, prima facie, the knowledge in the art, as established above,
combined with the teachings of Whittemore set forth above would have reasonably suggested the
claimed process encompassed by claim 1, including all of the limitations thereof, to one of ordinary skill
in this art at the time the claimed invention was made.
Accordingly, in view of the prima facie case of obviousness established above, the burden of
going forward has shifted to appellant to submit argument and/or evidence in rebuttal. See generally, In
re Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984); In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
We have again evaluated all of the evidence of obviousness and nonobviousness based on the
record as a whole, giving due consideration to the weight of appellant’s arguments as they pertain to the
ground of rejection set forth above. Appellant has recognized that Whittemore does teach heating a
metal article coated with “conventional PPO,” that is, unsubstituted polyphenylene oxide, as set forth
above, but contends that the reference “completely skips over the possibility that an alkyl-substituted
PPO material could be used instead of its mandatory fluroraliphatic-substituted PPO resin” (brief, page
5 n.2). Thus, appellant submits that Whittemore did not appreciate the claimed invention and therefore
the “PTO cannot rely upon such unappreciated inherency to support obviousness” (id.). We cannot
agree with appellant’s position.
The issue here is whether the one of ordinary skill in this art would have applied the process of
hardening the surface of unsubstituted polyphenylene oxide coated metal articles shown in Whittemore
to alkyl-substituted polyphenylene oxide coated metal articles that were known in the art as recognized
in the preamble to appealed claim 1, in order to harden the so coated metal surface, and not one of
inherency in the sense that appellant intends. Appellant has couched the extent of heating that must be
employed in the claimed process in the requirement that the coated metal article must be heated to the
extent that the corrosion resistance of the coated metal is increased. Appellant’s choice of claim
language to describe their claimed process alone is not sufficient to patentably distinguish the claimed
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