Appeal No. 2004-0109
Application 09/324,549
that the results reported for these two Aging Conditions in specification FIG. 1 and as restated in
brief Figure 1a establish the criticality of the claimed aluminum lithium alloys and thus
patentably distinguish the claimed aluminum lithium alloys over the closely related alloys
disclosed and claimed in Rioja ‘792 and disclosed in Rioja ‘859, such claims and disclosures
encompassing all of the tested alloys, for several reasons.
We cannot agree with appellants that the difference between claimed alloys B and C and
now “prior art” alloy D is “significant” with respect to either Aging Condition. We found above
that as reported in specification FIG. 1, the difference in TYS at Aging Condition 1 between
claimed alloys B and C, which have a virtually identical ksi of between 60 and 61, and prior art
alloy D, which has a ksi of about 57, is about 3.5 ksi; and that at Aging Condition 6, the ksi of
claimed alloy B and prior art alloy D are virtually identical, while the difference between claimed
alloy C and prior art alloy D is about 2 ksi. Indeed, we find that this is the actual difference in
results between these two sets of alloys, whether taken as reported in specification FIG. 1 or
restated as shown in brief Figure 1a, and indeed, appellants state that brief “Fig. 1a represents the
data in Fig. 1 in a different way,” not that it is different data.
Appellants have presented no scientific explanation or objective evidence explaining the
practical significance of the numerical difference between the claimed and prior art alloys
attained at either Aging Condition per se, with respect to whether such results are unexpected.
See, e.g., Klosak, 455 F.2d at 1080, 173 USPQ at 16, citing D’Ancicco, supra (“[I]t is not enough
to show that results are obtained which differ from those obtained in the prior art: that difference
must be shown to be an unexpected difference.”).
Furthermore, nowhere on this record has appellants established the practical significance
of testing at Aging Condition 1 vis-à-vis Aging Condition 6, or the practical significance of
either of these Aging Conditions vis-à-vis the other Aging Conditions which are akin to Aging
Condition 6. Indeed, with respect to the latter, from appealed claim 19, the written description in
appellants’ specification and the disclosure in each of Rioja ‘792 and ‘859 that we discussed
above, it is apparent that a TYS for an aluminum lithium alloy of about 80 ksi or higher is
desirable. Thus, on this record, we determine the evidence with respect to Aging Conditions 2
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