Appeal No. 2006-2781
Application 10/254,671
GROUNDS OF REJECTION
1. Claims 1, 7, 11, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fujita.1
2. Claims 1, 5-8, 11, and 15-18 are rejected under 35 U.S.C § 103(a) as
unpatentable over Kawano.
We affirm as to both grounds of rejection.
OPINION
Claims 1, 7, 11, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fujita
The Examiner maintains that claims 1, 7, 11, and 17 are prima facie
obvious in view of Fujita’s disclosure of a steel alloy having a composition
with constituents whose wt% ranges overlap or closely approximate those
recited by the claims. Answer 3 (citing Fujita, claim 7). The Examiner
notes that Fujita's steel contains 0.1 to 0.3% V, which is slightly lower than
Appellants’ range of greater than 0.30 but less than or equal to 0.35% by
mass of V recited in claims 1, 7 and 11. However, the Examiner’s position
is that absent any showing of criticality for the claimed range, the claims do
not distinguish over Fujita. Answer 4.
Appellants argue that the Examiner has failed to establish a prima
facie case of obviousness because he has not explained why one of ordinary
skill in the art “would have been motivated to modify Fujita in a manner
resulting in Appellants' claimed combination.” Br. 19. Contrary to
Appellants’ assertion, a prima facie case of obviousness exists where the
1 The Examiner has withdrawn the final rejection of claims 5, 6, 15, 16, and
18 under 35 U.S.C. § 103(a) as unpatentable over Fujita. Answer 4-5.
4
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