Ex Parte SCHWELLINGER - Page 3




                  Appeal No. 2002-2189                                                                                              Page 3                
                  Application No. 09/194,294                                                                                                              


                                                                        OPINION                                                                           
                           We reverse with regard to all of the rejections.                                                                               
                           All of the claims call for an alloy which is in either a partially-age-hardened condition T64 or                               
                  in an over-aged condition T72.  Appellant argues that the aged condition is a structural characteristic                                 
                  of the alloy (Brief at p. 13 and p. 17).  In the rejection, the Examiner makes no specific findings of                                  
                  fact with regard to the age hardened condition of the prior art alloys (Answer at p. 4).  In answering                                  
                  Appellant’s argument, the Examiner merely states that “appellant fails to show how the claimed                                          
                  aging conditions would affect the alloy’s properties which are different from the aged alloys as                                        
                  taught by the cited references.” (Answer at p. 5).                                                                                      
                           In order to establish a prima facie case with respect to a rejection made under                                                
                  § 102 or, alternatively, under § 103, the Examiner must present a reasonable basis to believe that                                      
                  what is claimed is identical or substantially identical to what is taught in the prior art.  In re Best, 562                            
                  F.2d 1252, 1254, 195 USPQ 430, 433-34 (CCPA 1977).  Only then does the burden shift to                                                  
                  Appellant.  Id.  The Examiner, here, attempts to shift the burden without presenting the required                                       
                  reasonable basis to believe a component made by the prior art is identical or substantially identical to                                
                  the component claimed (Answer at p. 5).                                                                                                 
                           Moreover, the record supports Appellant’s position that the limitation on age hardened                                         
                  condition is a structural difference.  The independent claims refer to a “condition” not a method.  The                                 
                  letter “T” followed by a number is a designation, in accordance with the Aluminum Association                                           
                  system, for a condition which arises in the alloy upon tempering.  In the T6 condition, the alloy has                                   







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