Appeal 2006-3302]
Application 10/153,865
from the teachings of the applied prior art. See In re Robertson, 169 F.3d
743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999). The Examiner
basically argues that it is reasonable to expect a hardness, as claimed, for a
portion of the pipe part of Ono because Ono discloses steel material
compositions for making a pipe that appear to be the same as used by
Appellants and Ono discloses induction hardening and tempering (Answer
4-5; Ono, tbl. 2 and col. 6, ll. 16-21).
Here the Examiner has not provided persuasive support for an
inherency theory. As explained by Appellants in the Brief (Br. 6-7), the
hardness achieved for a particular steel part depends on more than just the
composition of that part or on a general description of hardening as provided
by Ono. Rather, Appellants reasonably maintain that the hardness obtained
is influenced by the maximum temperature used during the hardening
treatment, the rate of heating of the steel part, the amount of time the steel
part is held at the highest temperature, the cooling rate, and atmospheric
conditions maintained during the hardening treatments (Id.). The Examiner
does not persuasively refute that assessment of Appellants. Rather, the
Examiner argues that Appellants have not shown a difference between the
hardening parameters of the claimed invention and those employed by Ono.
The Examiner’s rebuttal is not persuasive on this record primarily because
the Examiner has not shown where Ono provides any disclosure of a
hardening heat treatment temperature, rate of heating, time at maximum heat
temperature, cooling time, or hardening atmosphere such that it would have
been reasonable to shift the burden to Appellants for a comparison showing.
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