Appeal 2006-3308
Application 10/726,181
10) Sawada teaches that “in order to obtain an excellent property for
a support for a planographic printing plate, the Fe component is
0<Fe ≤ 0.20 weight %.” (col. 5, ll. 23-25).
11) According to Sawada, the inventors found that “streaked
unevenness caused in electrochemical graining was due to a difference of
concentration distribution of Fe,” which could be reduced by using the
Fe component in the range of 0<Fe ≤ 0.20 weight %. (col. 5, ll. 42-48).
12) Sawada’s alloy contains a Si component in the range of 0≤ Si ≤
0.13. (col. 5, ll. 56-57).
PRINCIPLES OF LAW
1) The Examiner bears the initial burden of establishing a
prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993).
2) To satisfy this burden, the Examiner must provide a detailed
analysis of the prior art and reasons why one of ordinary skill in the art
would have possessed the knowledge and motivation to make the claimed
invention. See In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336
(Fed. Cir. 2006).
3) Where all the elements of an invention can be found in a
combination of prior art references, a proper analysis under § 103
requires, inter alia, consideration of two factors: (1) whether the prior art
would have suggested to one of ordinary skill in the art that he should
make the claimed composition or device, or carry out the claimed
process; and (2) whether the prior art would also have revealed that in so
making or carrying out, one of ordinary skill would have a reasonable
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