Appeal No. 96-2884
Application No. 08/181,997
1247-48, 169 USPQ 303, 306 (CCPA 1971). Additionally appellant has the additional
burden of explaining the evidence of nonobviousness proffered. In re Borkowski, 505 F.2d
713, 717, 184 USPQ 29, 32 (CCPA 1974).
In example 2, as a comparison, appellant reduces an iron feed material to
metallic iron, and then he treats the metallic iron with a “gas composition containing carbon
monoxide, carbon dioxide, hydrogen and methane, which composition is “... equivalent to
the equilibrium gas composition at a selected point in the Fe C portion of Fig. 2". Appellant
3
indicates that there is no conversion or little conversion to iron carbide. We have considered
this evidence in the specification but do not find it persuasive of nonobviousness. From
Okamura’s teachings, one of ordinary skill in this art would have expected conversion of a
reduced iron product to iron carbide with the use of a combination of reducing and
carbonizing agents with a reducing agent. Moreover, from appellant’s specification one
would expect such conversion to occur as long as the gas composition was within the iron
carbide portion of Figure 2. Appellant’s example 2 shows that conversion occurs when the
concentrations of the carbon monoxide and carbon dioxide are modified. Appellant now
urges that the amount of carbon monoxide/carbon dioxide is crucial. However, the claims
are not limited to this specific concentration of CO and CO . The instant claims read on the
2
comparative gas composition and are not limited to the modified gas composition of Example
2 nor are all the claims limited to the formation of Fe C. Thus the evidence is not
3
commensurate in scope with the degree of protection sought in the instant claims. In re
17
Page: Previous 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 Next
Last modified: November 3, 2007