Tuesday, March 19, 2013

Appellant wins on 103 at Board in Ex parte Fukaya

From within Ex parte Fukaya

While the Examiner relies on case law for the proposition that combining known ingredients for known functions would have been obvious, the Examiner has not articulated any specific reasoning with some rational underpinning to support the legal conclusion of obviousness that addresses why one of ordinary skill in the art would have looked to JP ‘810, JP ‘729 or Lindén for metals for use in high temperature conditions to use as the metal substrate in JP ‘659’s sensor. In an attempt to provide some reason for looking to the aluminum-containing stainless steels of the prior art, the Examiner finds that Figure 2.4 of the STAINLESS STEEL HANDBOOK cited in the Evidence Appendix and of record shows that aluminum is one of the known metals affecting linear expansion (Ans. 8). However, as argued by Appellants Figure 2.4 shows the linear expansion of several pure metals as compared to to stainless steel SUS 304 (Reply Br. 6-7). The Examiner has not established that Figure 2.4 shows the effect of aluminum on linear expansion in a stainless steel composition.
Accordingly, we agree with Appellants that on this record there is no credible reason for substituting the aluminum-containing ferritic stainless steels of JP ‘810, JP ‘729 or Lindén for JP ‘659’s ferritic stainless steel absent impermissible hindsight. On this record, we reverse all of the Examiner’s § 103 rejections.

Kenyon & Kenyon handled the appeal.


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