Appeal No. 1999-0778
Application No. 08/710,685
for purposes of this appeal only, the appellants do not
contest that WO ‘238 establishes a prima facie case of
obviousness (brief, page 4). The appellants argue that their
Japanese priority application, 04-269365, filed September 11,
1992, a certified translation of which has been filed by the
appellants, antedates WO ‘238 and, therefore, renders it
unavailable as prior art. See id.
The examiner argues that there is no written descriptive
support in the appellants’ ‘365 priority application for the
term “no substantial porosity” which appears in both of the
appellants’ independent claims and that, therefore, WO ‘238 is
available as prior art (answer, pages 3-4). It is undisputed
that this priority document does not state that the ingot or
billet has no substantial porosity.
The appellants respond that the declaration of Nakamura
(filed March 9, 1998, paper no. 9) shows that the product in
embodiment 1 of the ‘365 priority application has no
substantial porosity (brief, pages 4-5). The appellants rely
upon Kennecott v. Kyocera, 835 F.2d 1419, 1420, 5 USPQ2d 1194,
1195 (Fed. Cir. 1987), cert. denied, 486 U.S. 1008 (1988). In
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