Appeal No. 1998-3276
Application No. 08/667,211
Hughes Inc., 215 F.3d 1297, 1303, 55 USPQ2d 1149, 1153 (Fed.
Cir. 2000).
Here, the examiner fails to account for the claim
recitations “during a manufacturing operation” (appealed claims
1 and 10), “in a manufacturing operation” (appealed claim 11),
and “in a manufacturing environment” (appealed claim 12). As
pointed out by the appellants (appeal brief, pages 7-8), the
present specification contains written description which
enlightens one skilled in the relevant art that these
recitations limit the invention to “processes used in a factory
or suitable place to manufacture quantities of triniobium tin
for commercial use.” (Specification, page 6, lines 7-11.)
Under these circumstances, it cannot be said that the appealed
claims include a process performed in a laboratory setting, such
as that described in Rumaner. Even assuming that it would have
been prima facie
obvious for one of ordinary skill in the art to modify Rumaner’s
process for suitability in a manufacturing operation, the
examiner has not pointed to any evidence that would have
suggested to one of ordinary skill in the art that the amount of
iron, which is said to be present in such a manufacturing
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