Appeal No. 2003-0210
Application 03/237,574
The examiner argues that his assertion that the appellants’
alloys were conventionally known is sufficient to establish a
prima facie case of obviousness because the appellants have not
challenged that assertion (answer, pages 8-9). The appellants,
however, state that “the particular art here is the coating of
uranium. During the Manhattan Project, appellant questions
whether the art had been around long enough for much to have
already become conventional” (brief, page 11). Thus, the
appellants have challenged the examiner’ assertion. The
examiner, therefore, to establish a prima facie case of
obviousness, must provide prior art and explain how the teachings
from the prior art itself would have suggested the claimed
subject matter to one of ordinary skill in the art, see In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976), and
the examiner has not done so.
The examiner argues that the mere existence of a federal
designation for an aluminum-silicon alloy containing 0.1% sodium
(specification, page 10, lines 27-29) indicates that such an
alloy was known in the art (answer, page 9). It is
inconceivable, the examiner argues, that such an alloy could be
disclosed and not have any known uses. See id. This argument is
not persuasive even if known uses for the alloy existed, because
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