Appeal 2007-2359
Application 90/006,951
obvious to combine because they would have been expected to perform the
same function is premised on an often unexamined assumption that the
additives act linearly and independently (or in some other well understood
way) of one another. The record here, however, indicates that the various
additives to aluminum alloys interact with one another in complicated,
nonlinear and unpredictable ways. Thus, the Examiner's arguments for
obviousness based on Reiso's teachings are not persuasive.
In the Answer, the Examiner offers, apparently for the first time, a
second rationale for obviousness based on the teachings of the EP/WO
publications that Mn improves extrusion surface quality by accelerating the
β- to α-AlFeSi transformation (EP at 3:22–26; FF 66) and thus counteracts
the stabilization of the β-phase by excess Si (EP at 3:18–20; FF 65).
(Answer at 7 and at 12–13.) The Examiner argues that "[a]ny Mn addition is
beneficial in this way." (Answer at 13.) The Examiner does not, however,
address whether alloys 6 and 16 are sufficiently similar to the higher Mg-
content alloys that EP/WO exemplifies such that both would have been
expected, reasonably, to have similar β-α transformation issues that would
be relieved by the addition of manganese. Rather, the Examiner implicitly
finds that the teachings are generally applicable to aluminum alloys, and
concludes that the addition of Mn to alloys 6 and 16 would have yielded
improved extrudability (id. at 14).
To the extent that the Examiner was justified in relying on the
accuracy of this interpretation of a nonpatent publication, the burden was
shifted to the Applicant to come forward with evidence and reasoning to
doubt the Examiner's interpretation of the record. Alcan responded that the
teachings of the EP/WO publications regarding the addition of Mn "is
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