Appeal No. 2003-1332 Page 8
Application No. 09/797,143
minimum of about 14% nickel plus manganese for imparting a fully austenitic structure,
and also a minimum of about 8% manganese for preventing ingot porosity.
After the scope and content of the prior art are determined, the differences
between the prior art and the claims at issue are to be ascertained. Graham v. John
Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Based on the examiner's analysis and review of Gu and claim 15, the examiner
ascertained (answer, pp. 3-4) that "Gu does not disclose the material used to make the
poppet valve [i.e., the limitation of claim 15 that the valve head is made increasingly
conformable to the valve seat by wear of the valve head through repeated contacts with
the valve seat, the repeated contacts causing a contact surface of the valve head to
achieve an increasingly smoother surface finish as a result of the wear]." With regard
to this difference, the examiner then determined that it would have been obvious to one
of ordinary skill in the art at the time the invention was made to have made the poppet
valve of Gu from the materials suggested and taught by either Danis or Kloske.
The appellants argue that the applied prior art does not suggest the claimed
subject matter. We agree.
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