Ex Parte Evans et al - Page 6

                  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).                                                         

                          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.                                                   

                      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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