Appeal No. 2004-0109
Application 09/324,549
that element. Appellants claim and disclose that the encompassed aluminum alloys are capable
of attaining a yield strength (L) above 80 ksi and a fracture toughness above about 33 ksi√inch
(specification, e.g., page 4, lines 7-16).
The references relied on by the examiner are:
Rioja et al. (Rioja ‘792) 4,961,792 Oct. 9, 1990
Rioja et al. (Rioja ‘859) 5,076,859 Dec. 31, 1991
The examiner has rejected appealed claims 19, 21 through 35, 37 and 40 through 44
under 35 U.S.C. § 103(a) as being unpatentable over Rioja ‘792 or Rioja ‘859 (answer, page 4).1
Appellants state that “Claim 41 stands or falls alone” and that all other appealed claims
“stand or fall together” (brief, page 3). The examiner acknowledges the two groups of claims but
holds that all of the claims stand or fall together because appellants fail “to provide reasons in
support thereof” (answer, page 2). Appellants respond in the reply brief (page 2) that claim 41
stands alone because of reasons provided in the brief with respect to United States Patent
4,869,870 to Rioja et al., but acknowledge that the argument is moot because this Rioja patent is
not relied on in the answer. Based on this record, we conclude that all of the appealed claims
stand or fall with appealed independent claim 19, and accordingly, we decide this appeal based
on appealed claim 19. 37 CFR § 1.192(c)(7) (2002).
We affirm.
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the examiner’s answer and to appellants’ brief for a complete exposition thereof.
Opinion
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the examiner that the claimed aluminum alloy encompassed by appealed claim
19 would have been prima facie obvious over Rioja ‘792 or Rioja ‘859 (answer, page 4) to one
of ordinary skill in this art at the time the claimed invention was made.
1 The examiner specifically withdrew the ground of rejection under 35 U.S.C. § 112, first
paragraph, written description requirement (answer, page 2), and did not advance in the answer
seven (7) references relied on in the ground of rejection under 35 U.S.C. § 103(a), which grounds
are set forth in the final action mailed June 18, 2003 (Paper No. 14).
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