Appeal No. 2006-2781
Application 10/254,671
Kawano teaches away from the claimed range of “0.25 to 0.35% by mass of
C,” Br. 22.
In determining obviousness a prior art reference must be evaluated
for all that it fairly teaches and not only for what is indicated as preferred.
See In re Bozek, 416 F.2d 1385, 163 USPQ 545 (CCPA 1969)). In this case,
the Examiner found that Kawano clearly teaches ranges which overlap the
claimed ranges, thereby establishing a prima facie case of obviousness (see
supra, n.2) and shifting the burden to Appellants to rebut. See In re Dillon,
919 F.2d 688, 692, 16 USPQ2d 1897, 1909 (Fed.Cir.1990) (en banc).
Appellants’ argument that “Kawano teaches away” is not sufficient to
overcome the Examiner’s finding of obviousness since Kawano’s range of C
content (0.01-0.25%) still overlaps the lower end point of the presently
claimed range. See Final Rejection 4, ¶ 10. Moreover, since Kawano, like
Fujita, teaches that more than one variable effects the properties of steel, we
do not find the relied-upon portion of Kawano sufficient to establish a
“teaching away” from a C content of at least 0.25%.
In their Reply, Appellants offer the following additional remarks
regarding the rejection of the claims as unpatentable over Kawano.
According to Appellants, a composite steel resulting from the addition of Nb
and V, as required by the appealed claims, is different in the form of
precipitation of fine carbides from a composite steel resulting from the
addition of Ta and V. Reply 7. Appellants assert that the claimed steel
contains carbides precipitated in the form of (M,M')C and MC (i.e., NbC,
VC, and (Nb,V)C), while “Kawano's TaV-containing steel includes carbides
precipitated only in the form of MC” (i.e., TaC and VC). Id. Appellants
maintain that the claimed steel has greater stability at high temperatures due
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