Appeal No. 1999-0130
Application No. 08/439,035
are drawn to processes, not products, and that no
novelty has been alleged by appellant[s] of [sic, for]
the alloy compositions themselves. [Examiner's
answer, p. 7; emphasis added.]
From our perspective, the examiner's comments are
inapposite to an analysis on whether the claimed subject matter
as a whole would have been prima facie obvious, within the
meaning of 35 U.S.C. § 103, to one of ordinary skill in the art
over the collective teachings of the applied prior art
references. That the recited alloys may be old is insufficient
to establish that one of ordinary skill in the art would have
been led by the teachings of the applied prior art to arrive at
the claimed invention. In re Warner, 397 F.2d 1011, 1016, 154
USPQ 173, 177 (CCPA 1967) ("[W]here the invention sought to be
patented resides in a combination of old elements, the proper
inquiry is whether bringing them together was obvious and not,
whether one of ordinary skill, having the invention before him,
would find it obvious through hindsight to construct the
invention from elements of the prior art."); In re Rouffet, 149
F.3d 1350, 1359, 47 USPQ2d 1453, 1459 (Fed. Cir. 1998) ("[T]he
Board must explain the reasons one of ordinary skill in the art
would have been motivated to select the references and to
combine them to render the claimed invention obvious."); In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
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