Appeal No. 2004-2111
Application No. 09/535,550
and compare prior art products. In re Best, 562 F.2d 1252, 1255,
195 USPQ 430, 433-34 (CCPA 1977). On the record of this appeal,
the appellant has proffered no such proof.
In light of the foregoing, and for the reasons expressed in
the answer, it is our determination that the examiner has
established a prima facie case of anticipation which the
appellant has failed to successfully rebut with argument or
evidence to the contrary. See In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). We hereby sustain,
therefore, the examiner’s section 102 rejection of claim 28 as
being anticipated by JP ‘051, JP ‘673, JP ‘740 or JP ‘410.
Concerning the section 103 rejection based on JP ‘051, it is
indisputable that the 0.50-0.60 weight percent carbon content
range defined by appealed claim 27 is far outside the 1-3 weight
percent carbon content range disclosed in the aforementioned
reference. In light of this circumstance, we perceive no basis
for a conclusion of obviousness. See In re Sebek, 465 F.2d 904,
906-07, 175 USPQ 93, 95 (CCPA 1972). Moreover, the examiner’s
answer does not present with reasonable specificity a basis for
such an obviousness conclusion.2 It follows that we cannot
2
2 Indeed, the fact that appealed claim 3, which contains the
same carbon content limitation as claim 27, was dropped from this
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