Appeal No. 2004-1032 Page 6
Application No. 09/835,510
While Melton may not expressly disclose a copper containing alloy
having such a property as argued by appellants, that argument
misses the mark since AbuJudom, not Melton, teaches the
combination of Ni, Ti, Cu and Hf in forming the alloy while
requiring that the Ms is at least 80/C.
In reaching the conclusion that the herein claimed subject
matter is prima facie obvious over the teachings of the applied
references, we also note that the prior art references in
question need not provide all of appellants* reasons to
establish a prima facie case of obviousness. See In re Kemps, 97
F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996) (the
motivation to combine features need not be identical to that of
appellant to establish a prima facie case of obviousness).
Furthermore, to the extent appellants may have
recognized another potential advantage or property of the claimed
alloy that would have been obtained by otherwise following the
teachings of the prior art, that recognition does not necessarily
form a basis for patentability. See In re Woodruff, 919 F.2d
1575, 1577-1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
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