Appeal No. 2005-1354
Application No. 09/940,481
The claims on appeal encompass a large variety of
compositions. As such, the examiner has not explained why
various alloys within the scope of the appealed claims would not
be expected to have different martensitic transformation start
points and thermal coefficients of expansion. As pointed out by
appellants, Examples A-D of the specification exemplify different
compositional alloys having martensitic transformation start
points of -90°C and -186°C and different thermal coefficients of
expansion. The examiner has not carried the initial burden of
establishing that one of ordinary skill in the art would not be
able to make the alloys exemplified in the specification and
embraced by the appealed claims.
We now turn to the § 103 rejection of the appealed claims.
For the reasons set forth in the prior Board decision, we find
that the collective teachings of Inoue, Fukuda, Ishikawa and Kato
would have rendered the claimed invention obvious to one of
ordinary skill in the art. Although appellants assert that a new
argument is made in the present appeal for claims 1-8 that were
not presented in the prior appeal, the examiner has properly
determined that res judicata applies. The examiner's rejection
of instant claims 1-8 under 35 U.S.C. § 103 was sustained by the
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