Appeal No. 2006-2781
Application 10/254,671
reference column 11, lines 49-51 of Fujita which states: "a vanadium
content exceeding 0.3% has the opposite effect of causing deterioration of
the creep rupture strength.” Br. 14. In our view, this limited statement is
not sufficient to establish that one of ordinary skill in the art would have
been dissuaded from using a V content of greater than 0.3%, particularly
since Fujita teaches that several variables effect creep strength. See, e.g.,
column 11, lines 15-18 (Ni), column 11, lines 28-31 (Cr), column 11, lines
60-64 (Tu), column 12, lines 20-25 (Ta), column 12, lines 64-66
(impurities).
Appellants have not directed us to evidence of unexpected results.4
The Examiner, however, points out that the presently claimed range of
“greater than 0.30 but less than or equal to 0.35%” does not appear to be
critical since the original claims and page 9 of the Specification specify a
permissible range of 0.26 to 0.35% V. Appellants have not addressed the
Examiner’s comment.
claimed invention. Rather, a portion of a reference which teaches away
from the claimed invention may be relied on by an Applicant to rebut a
prima facie showing of obviousness. See In re Peterson,315 F.3d 1325,
1330, 65 USPQ2d 1379, 1383 (Fed. Cir. 2003) (“[T]he existence of
overlapping or encompassing ranges shifts the burden to the applicant to
show that his invention would not have been obvious.”) Accordingly, we
treat this argument as an attempt to rebut the Examiner’s prima facie
showing of obviousness.
4 Appellants do not appear to rely on the comparative data provided in Table
1 of the specification. Cf. In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14,
16 (CCPA 1972) (the burden of analyzing and explaining data to support an
argument of unexpected results rests on the party asserting it).
6
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