Appeal No. 1998-2295
Application No. 08/435,902
the coating based on this determination so that the coefficient of thermal expansion of the
substrate and coating are about the same. Consequently, the rejection of claims 6, 9, 12, 13,
15, 16 and 18 to 20 over Wolfla and Hodshire is reversed.
The Examiner added the Blackburn reference to the combination of Wolfla and
Hodshire to reject claims 2, 10, 11 and 17.
Claims 2, 10, 11 and 17 define the substrate of the claimed invention as comprising
an alloy of titanium and aluminum or titanium, niobium and aluminum. The Examiner relies
on Blackburn to disclose that the use of alloys comprising titanium, aluminum and/or
niobium is known to be used in turbine engines. The Examiner concludes that the teachings
of Hodshire and Blackburn would have rendered obvious the use of a titanium-aluminum-
niobium alloy as the substrate in Wolfla. (Answer, p. 9). The mere fact that the prior art
could be modified would not have made the modification obvious unless the prior art
suggested the desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984); In re Laskowski, 871 F.2d 115, 117, 10 USPQ2d 1397, 1398
(Fed. Cir. 1989). The record indicates that the motivation relied upon by the Examiner for
selection of a particular substrate comes from the Appellants’ description of their invention
in the specification rather than coming from the applied prior art and that, therefore, the
Examiner used impermissible hindsight in rejecting the claims. See W.L. Gore &
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