Appeal No. 2003-0668
Application No. 09/530,451
reasoning that JP '833 would have motivated one of ordinary skill
in the art to modify the process of Yamao by eliminating the
quenching and tempering steps in order to avoid the delayed
fracture of the steel, we must agree with appellants that the
examiner has not established that one of ordinary skill in the
art would have been motivated to eliminate two of the exemplified
process steps of Yamao with the expectation of still achieving
the target tensile strength of at least 2,000 N/mm2. Appellants
have accurately pointed out that the process of JP '833 produces
wires having tensile strengths significantly lower than the 2,000
N/mm2 achieved by Yamao.
Concerning method claims 7-9, which contain the limitation
"without subjecting the same to quenching and tempering process,"
we find, for the reasons given above, that the examiner's stated
reason for modifying the process of Yamao requires the use of
impermissible hindsight. Also, although JP '833 discloses a
method of making a steel wire of pearlite structure comprising
the claimed steps of patenting, drawing and annealing, the
examiner has not demonstrated that it would have been obvious for
one of ordinary skill in the art to incorporate the claimed "shot
peening" into the method of JP '833.
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