Appeal 2006-3308
Application 10/726,181
expectation of success. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d
1438, 1442 (Fed. Cir. 1991).
4) "A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following
the path set out in the reference, or would be led in a direction divergent
from the path that was taken by the applicant." In re Gurley, 27 F.3d
551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir. 1994).
ANALYSIS
The Examiner’s position is that one of ordinary skill in the art would
have been motivated to apply the steps of rolling and electrograining as
taught by Sawada to the rolling ingot taught by Brusethaug in order to
prepare a printing plate. (Answer 3-4). Appellants argue that Sawada
expressly states that the alloys used in its method should have an Fe content
no greater than 0.20 weight % and, therefore, teaches away from using
Brusethaug’s grain-refiner-free ingot which contains 0.26 weight % Fe and
0.13% Si. (Br. 7; Reply 3). As pointed out by Appellants, the Examiner has
failed to explain why, given this apparent teaching away from using an ingot
containing 0.26 weight % Fe, one of ordinary skill in the art would,
nonetheless, have had a reasonable expectation of success in using
Brusethaug’s grain-refiner-free ingot in Sawada’s process.
CONCLUSION
For the foregoing reasons, we conclude that the Examiner’s findings are
not sufficient to establish a prima facie showing of unpatentability under
35 U.S.C. § 103.
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