Appeal No. 2005-0567
Application 10/280,391
reasonable expectation of obtaining a shroud plate with the necessary properties for use in a
rotating thermal machine blading assembly as stated by the examiner. We find no disclosure in
either Sekino or Fried which would have suggested to one of ordinary skill in this art that the
castable compositions of either reference cannot be welded as taught by Fried. Thus, prima
facie, one of ordinary skill in this art routinely following the combined teachings of Sekino and
Fried would have arrived at the claimed invention, including each and every limitation of claim
11 arranged as required by that claim, without resort to appellants’ specification and claim. Dow
Chem., supra; Keller, supra; see also O’Farrell, supra.
The method of claim 12 comprises at least the steps of welding any piece of metal that
includes the specified composition that is prepared by any processes, to any piece of metal by
any process to form a welded article, which can include surface welding by any process as in
claim 15. The examiner finds that, prima facie, the combined teachings of Sekino and Hummel
would have suggested to one of ordinary skill in this art that tubing made of an alloy such as the
heat resistant nickel alloys of Sekino can be welded together as shown by Hummel in the
reasonable expectation of obtaining welded tubing (answer, pages 7-8). We find that, prima
facie, the combined teachings of Sekino and Hummel provide substantial evidence in support of
the examiner’s position. Indeed, Hummel would have disclosed to one of ordinary skill in this
art that the welding method taught therein is suitable for welding, among others, “heat-resistant
alloys,” “aluminum alloys, . . . copper alloys, magnesium alloys, nickel alloys, titanium alloys,
and zirconium alloys” (col. 6, ll. 32-38), which would have reasonably suggested using tubing
prepared from the heat resistant nickel alloys of Sekino which contain also contain aluminum,
copper, magnesium, titanium and zirconium elements. Furthermore, with respect to the method
of claim 15, as the examiner points out, as a matter of fact one of ordinary skill in this art would
have readily observed that the welding of the tubing in Hummel involves surface welding
because the surfaces of the end of the tube are necessarily welded to form the butt joint (answer,
page 8). Thus, prima facie, one of ordinary skill in this art routinely following the combined
teachings of Sekino and Hummel would have arrived at the claimed invention, including each
and every limitation of claims 12 and 15 arranged as required by that claim, without resort to
appellants’ specification and claims. Dow Chem., supra; Keller, supra; see also O’Farrell,
supra.
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