Appeal No. 2003-2136 Page 12
Application No. 09/562,952
b. Obviousness Determination
"[I]t is elementary that the mere recitation of a newly discovered function or
property, inherently possessed by things in the prior art, does not cause a claim drawn
to those things to distinguish over the prior art." In re Swinehart, 439 F.2d 210, 212-13,
169 USPQ 226, 229 (CCPA 1971). Furthermore, "'where the Patent Office has reason
to believe that a functional limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove that the subject matter shown
to be in the prior art does not possess the characteristic relied on.'" In re Schreiber, 128
F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997) (quoting Swinehart, 439 F.2d
at 213, 169 USPQ at 229).
Here, the combined teachings of the references would have suggested forming a
firing tip chip from the same alloy that the appellants use. Because "rhodium . . . has a
lower melting point than iridium," (Spec. at 3), the appellants form their chip from an Ir-
Rh alloy. (Id.) As explained regarding the first point of contention, the references would
have suggested such an Ir-Rh alloy. The appellants explain that a sufficient "bonding
strength well over 100 N is secured when more than 2% wt Rh is contained in noble
metal chip. . . ." (Spec. at 8-9.) Osamura's Ir-Rh alloy, which "contains Rh in an
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: November 3, 2007