The opinion
RICH, Judge,
with whom MARKEY, Chief Judge, joins (dissenting).
I would affirm the rejection for obviousness under 35 U.S.C. § 103 , and thus not reach the double patenting rejection.
We are here primarily concerned, of course, with the patentability of the principal claim, 23. In analyzing it, the board opinion says:
From our analysis of the appealed claims, we find that claim 23, upon which all of the other claims either directly or indirectly depend, calls for the three steps of:
1. melting the alloy in a graphite crucible in a noncontaminating environment,
2. cooling at least a part of the die body while forcing the alloy through the shaped orifice, and
3. continuously removing alloy from the die.
To be more detailed in my discussion, I will change the board’s view of the invention to regard it as a 4-step process:
1. melting the alloy in a graphite crucible,
2. cooling at least part of the die body,
3. forcing the alloy through the shape-forming orifice,
4. removing the alloy from the die.
The board’s concise analysis of the examiner’s rejection and its reasoning in affirming it are as follows (my emphasis):
In rejecting the appealed claims, i.e., claims 8 through 14 and 23 through 28, as being unpatentable over Clark in view of Eldred, Heraeus, Howard et al. and Buehler et al., the examiner correctly took the position that Clark teaches using a plate of a TiNi-base alloy to be melted in a graphite crucible. The rest of the alloy, he asserted, is melted by induction heating and then, when the plate melts through, the metal is cast downward into a mold. In view of the Eldred disclosure, the examiner held it to be obvious that the casting step of Clark could be continuous casting. As to the size of the mold opening, the examiner was of the view that it would be obvious to make the size of the mold opening the size of the desired product.
It will be observed that the rejection of claim 23 is based on two references *1143 only, Clark and Eldred, and the skill of the art, notwithstanding the discussion in the majority opinion of other prior art patents.
As for step 1, melting, appellant makes no claim to any novelty therein. His specification says it can be performed as taught by the prior art in these words:
The method according to the present invention involves the following steps:
A. Melting and alloying a near TiNi composition or cobalt-substituted TiNi ternary alloy of controlled transition temperature in the graphite crucible 11. This may be achieved in several ways:
1. Initially melting the alloy as disclosed in U. S. Patent 3,174,851 and casting the same in ingot form of predetermined shape; the ingot is then placed into crucible 11 and melted by induction heating; * * *.
He also says it can alternatively be performed as disclosed in Buehler patent 3,529,958, which issued on application serial No. 592,069. That patent is not technical prior art. The statement, which shows appellant did not consider any aspect of the melting step to be part of the invention herein claimed otherwise than as one step of a combination of steps, reads:
2. Melting the alloy in accordance with the preferred technique as described in U. S. Application Serial No. 592,069 by employing a graphite crucible. The melted alloy is then cast in a suitable mold, whereby the final solidified ingot will be preferably cast in a shape to fit the cross section of the graphite crucible 11 of Figure 2; the ingot is then again placed into crucible 11 and melted by induction heating;
If, as the majority appears to believe, melting 55 — Nitinol in a graphite crucible is an unobvious step in appellant’s process, my answer is that Clark shows it is the most obvious way to melt. Let us remember that though the claims specify TiNi-base alloys, such alloys were known (Buehler et al.) and it was known to make wire from them. They are a species of titanium alloy, the subject matter of the Clark prior art patent, though Clark does not disclose nickel (Ni). He does disclose alloys of titanium (Ti) in various admixtures with aluminum, tin, iron, chromium, molybdenum, manganese, and vanadium. Furthermore, he clearly discloses the knowledge of the art that Ti has an affinity for hydrogen, nitrogen, oxygen, and carbon and the melting and pouring of Ti alloys under vacuum and in the presence of inert gas in an enclosure. He also discloses using a disc or skull in the bottom of the crucible. Clark’s preferred crucible is “made of dense graphite.” He casts from the bottom of his crucible. * Clark treats graphite crucibles as old in the art. El-dred, casting shapes continuously by chilling them in the cooling die, delivers molten metal from an electrically heated graphite mold. Melting in a graphite crucible thus appears to be the usual practice in the art. While no reference shows melting Ti-Ni alloys in graphite crucibles, which shows bare novelty in the claims, it is significant that appellant has not pointed out that Ti-Ni alloy is so different from Ti-(other metal) alloys as to call for different or unobvious melting techniques.
I cannot see why it would not be entirely obvious to anyone familiar with the melting of Ti-base alloys in graphite crucibles and desirous of making a continuous article such as a wire or thin rod or ribbon to follow the teachings of El-dred and flow the molten alloy out of the bottom of the crucible through a die of suitable size and shape which is provided with cooling means to remove the *1144 heat from the metal to cause it to solidify in the die.
The steps of forcing the alloy through the shape-forming orifice and removing the alloy from the die are self-evident. As for the forcing step, any continuous casting process has to do this. Appellant recognizes that continuous casting is old in the art. Claim 23 describes the forcing step broadly; claim 25, as done by inert gas pressure. As to claim 23, appellant says the forcing is done merely by gravity: “ * * * preferably, the weight of the charge in the crucible 11 will be used to act directly as a pressure head.” There is nothing very unobvious there; sinks drain that way. The claim 25 gas pressure feeding limitation is taught in the prior art by Howard et al. There is no novelty in forcing metal out of the mold, whether by gravity or inert gas. Without the removing step, no article will be made. Besides, Eldred teaches drawing the formed article out of the cooling die by a pair of “pull-out rolls.”
Thus I find the claim 23 method obvious from the prior art. What do the dependent claims add? The board opinion continued (my emphasis):
The examiner next applied Heraeus to show that it is known to use a plug to stop up the bottom of the melting crucible, if so desired. Howard et al. was then applied for its teaching of applying inert gas to the melt in a crucible to assist the feeding of the liquid into the molding area. Buehler et al., the examiner thereafter asserted, teaches that a TiNi-base alloy as recited by appellant is old and that such an alloy is conventionally melted using vacuum are melting as taught by Clark. The examiner then drew the further conclusion that the alloy of Buehler et al. could be melted in the manner taught by Clark [by induction heating]. We agree with both the examiner’s reasoning and his conclusion. Therefore, we will sustain his rejection of the appealed claims on this ground.
Appellant has not seriously relied on any of the limitations of his dependent claims to show patentability but has argued them all together. They fall with claim. 23. I find no error in the board’s reasoning, and would affirm the board’s decision affirming the rejection of the dependent claims as well.
I agree with the majority on the legal test to be applied. The board erred when it stated, “ * * * the differences between the prior art and the processes of the appealed claims are such differences as would be obvious to one skilled in the art armed with the disclosures of the applied references.” The decision of the board, however, is correct for the reasons given above. To recapitulate: the subject matter of claim 23 is at best the combination of the four steps set forth above. The steps are all old. The TiNi alloy is old, making it into wire is old, and continuous casting of molten metals is acknowledged in appellant’s specification to be old. What then is new in the combination? Comparing appellant’s crucible with Clark’s crucible as shown in the drawings reproduced by the majority, I note they are both induction furnaces with graphite crucibles (Clark’s crucible is 11). Both discharge from the bottom; both are casting Ti alloys. Both can use vacuum or fill the enclosed space around the crucible with inert gas. Obviously, the pressure of the gas must be under control and hence can be adjusted to any desired pressure. So what difference is there?- Only casting through a cooled die instead of freely into a mold. The bottom of appellant’s mold and his cooled die body function in the same way as the bottom of Eldred’s graphite mold 1 and his “[c]hilling means for freezing the metal,” designated 7. If there is any significant difference between Eldred’s cast rod 11 and appellant’s wire 20, it is not self-evident.
Therefore, the “subject matter as a whole” amounts to putting Eldred’s mold-die combination at the discharge opening 13 of Clark’s crucible, in place of his mold 25, to cast wire instead of ingots. Looking at the claimed subject *1145 matter as a whole. I think it would clearly have been obvious to those in the Ti-alloy casting art, within the meaning of § 103, from the disclosures of the' cited references.
The relative term “momentary,” used by Clark to describe the time during which his alloys remain in the crucible, is of little value in demonstrating the unobviousness of claim 23. The forcing step, as explained infra, is the obvious expedient for reducing the time the melt remains in the crucible,