Appeal No. 1999-0764
Application 08/745,199
The difficulty that we have with the examiner’s position is that the examiner does not
first established that there was a reasonable suggestion in the prior art to modify the method of
Krutenat by changing the halide activator before addressing the question of whether such a
modification would have a reasonable likelihood of success. Thus, on this record, it reasonably
appears that the “suggestion” found by the examiner was provided by appellants’ disclosure. See
Dow Chem. Co., 837 F.2d at 473, 5 USPQ2d at 1531. Indeed, the examiner does not address
appellants’ arguments that the teachings of Davis with respect to the chromizing method would
not have provided the suggestion to one of ordinary skill in this art to modify the diffusion
mixture that formed the pack in the method of forming an aluminum-silicon coating in the
method of Krutenat by using different halide activators, and relies on declarant Bayer’s
expression of surprise at the test results obtained in the declaration for a finding of a reasonable
expectation of success as support for the “suggestion” (answer, page 7). In this respect, we agree
with appellants’ that “Mr. Bayer’s statement . . . is not directed to whether . . . [the] prior art
provides a teaching, suggestion or motivation to modify the Krutenat pack mix and substitute
NH4Cl for NaCl” (brief, page 9).
On this record, we must, therefore, conclude that the examiner has not shown that the
prior art would have provided one of ordinary skill in this art with a teaching, suggestion or
motivation to modify the method of Krutenat in order to arrive at the claimed method
encompassed by the appealed claims, which is necessary to establishing a prima facie case of
obviousness, and thus we must reverse both grounds of rejection.
The examiner’s decision is reversed.
REMAND TO THE EXAMINER
We decline to exercise our authority under 37 CFR § 1.196(b) and enter on the record a
new ground of rejection of appealed claims 11 through 14,4 drawn to metal alloy products, as
being unpatentable under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under
35 U.S.C. § 103(a) as being obvious over Krutenat, because it is not apparent to us that Krutenat
is the only applicable prior art in this respect.
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