Appeal No. 1999-0130
Application No. 08/439,035
1999) ("[T]he best defense against the subtle but powerful
attraction of a hindsight-based obviousness analysis is rigorous
application of the requirement for a showing of the teaching or
motivation to combine prior art references.").
Not only is there no teaching, motivation, or suggestion to
combine the references, there is also no indication that one of
ordinary skill in the art would have had a reasonable
expectation of success in replacing the alloys described in
Nishikawa with the recited alloys as proposed by the examiner.
Vaeck, 947 F.2d at 493, 20 USPQ2d at 1442; In re O=Farrell, 853
F.2d 894, 904, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988).
Thus, it is our judgment that the examiner has not
established a prima facie case of obviousness within the meaning
of 35 U.S.C. § 103. As a consequence, we cannot uphold the
examiner's rejection on this ground.
With respect to the examiner's rejection based on Habu or
Erickson in view of either Nishikawa or Ward, the examiner
states:
The processes of Habu and Erickson differ from those
as recited in the appealed claims in that Habu and
Erickson do not recite the required "roll casting"
step of the appealed claims followed by cold rolling
without an intermediate thermal treatment. Nishikawa
and Ward both indicate that such preliminary steps in
forming aluminum alloy sheets are conventional in the
art...Given that all of the cited prior art is drawn
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