Appeal 2007-1529
Application 10/385,722
material, which alloy is useful in the manufacture of automobile engine parts
(EP’ 901, p. 3, ll. 5-9, 38, and 39). In this regard, EP ‘901 evinces that the
use of average crystal particle sizes of less than 10 µm results in higher
tensile strength (EP ‘901, Fig. 9). Also, Kojima discloses the beneficial
effect of employing small crystal grain sizes, including sizes within the
claimed range in enhancing the plasticity (formability) properties of
magnesium alloys (Kojima, Section 5.5 and Table 5.5.1). In light of these
teachings of the applied references, there is ample evidence suggesting the
use of small crystal grain sizes as claimed in the forging alloy material of EP
‘710, notwithstanding Appellants’ argumentation to the contrary.
Concerning the requirement of representative claim 1 for further
forging, we note that Appellants acknowledge the use of more than one
forging (shaping) step to be well known (Specification, ¶ 0005).2 Moreover,
Appellants have not distinguished the representative claim 1 forging by
specifying patentably distinct or differing conditions therefore (see, e.g.,
paragraph 0020 of Appellants’ Specification). In this regard, EP ‘710
discloses hot forging at temperatures, such as 250°C, and at forging rates
that would appear to be encompassed by the forging of representative claim
1. Compare paragraphs 0028-0058 of EP ‘710 with paragraphs 0037 and
0038 of the Specification. In any event, representative claim 1 is not limited
2 It is axiomatic that admitted prior art, including prior art found in an
applicant’s Specification, may be used in determining the patentability of a
claimed invention, and that consideration of the prior art cited by the
Examiner may include consideration of the admitted prior art found in the
Specification. In re Nomiya, 509 F.2d 566, 570-571, 184 USPQ 607, 611-
612 (CCPA 1975); In re Davis, 305 F.2d 501, 503, 134 USPQ 256, 258
(CCPA 1962).
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013