Ex Parte Yamadera et al - Page 2

                Appeal 2007-2242                                                                                 
                Application 10/352,997                                                                           
                       In deciding this appeal, we have considered the following:  (1) the                       
                Final Rejection, mailed January 20, 2006; (2) the Appeal Brief, filed                            
                September 1, 2006; (3) the Examiner’s Answer, mailed November 6, 2006;                           
                and (4) the Reply Brief, filed January 8, 2007.  We have also studied                            
                Applicants’ Specification and the whole of Lee, European Patent 777,756.                         
                                             Statement of the Case                                               
                       The claims on appeal relate to “a duplex stainless steel for use in a                     
                urea manufacturing plant” (Specification, p. 1).  “This duplex stainless steel                   
                has a high corrosion resistance in environments where construction materials                     
                of urea plants are exposed” (Specification, p.1).  The claimed steel is also                     
                said to possess strength, prevent formation of a sigma phase if the steel is                     
                exposed to specific temperatures, and display good surface properties in hot                     
                working (Specification, p. 3).                                                                   
                       The main issue on appeal is whether the Examiner has made out a                           
                case for obviousness under 35 U.S.C. § 103(a).  “[T]he examiner bears the                        
                initial burden, on review of the prior art or on any other ground, of                            
                presenting a prima facie case of unpatentability.”  In re Oetiker, 977 F.2d                      
                1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).  The concept of prima                         
                facie obviousness is a procedural mechanism, which requires the examiner                         
                to produce evidence sufficient to support a ruling of obviousness in the first                   
                instance.  See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 787-788                        
                (Fed. Cir. 1984).  “If examination at the initial stage does not produce a                       
                prima facie case of unpatentability, then without more the applicant is                          
                entitled to grant of the patent.”  In re Oetiker, 977 F.2d at 1445, 24 USPQ2d                    
                at 1444.                                                                                         



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