Appeal No. 1999-0130
Application No. 08/439,035
to processes of casting, cold rolling, and heat
treating of aluminum alloys, it would have been an
obvious expedient to one of ordinary skill in the art
to prepare the alloy sheets which are to be processed
by the methods of Habu or Erickson by the casting and
working steps as described by Nishikawa or Ward.
[Examiner's answer, pp. 5-6.]
In response to the appellants' argument that neither Habu
nor Erickson teaches the roll casting step recited in the
appealed claims, the examiner alleges:
In the present case, novelty does not reside in any
particular method of casting, and pages 1-2 of the
present specification indicate that roll casting, as
understood by appellants, was in fact known in the art
prior to the present invention. The examiner simply
fails to see how the substitution of one known casting
process for another (both being types of casting
disclosed in the art used in the rejections) involves
a destruction of the teachings of any individual
reference...[Id. at p. 9.]
Again, however, the fact that roll casting is "known in the
art" is insufficient to establish that one of ordinary skill in
the art would have been led to modify Habu or Erickson to
feature a roll casting step. Warner, 397 F.2d at 1016, 154 USPQ
at 177.
Also, the examiner has not established that one of ordinary
skill in the art would have modified the process of Habu or
Erickson to include a roll casting step with a reasonable
expectation of success. Vaeck, 947 F.2d at 493, 20 USPQ2d at
1442; O=Farrell, 853 F.2d at 904, 7 USPQ2d at 1681.
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