Ex Parte Evans et al - Page 5

                  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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