Appeal 2007-0873
Application 10/395,236
II. DISCUSSION
A. Issue
The dispositive issue in this appeal arises out of Appellants’
contentions with regard to the concentration of carbon required by the claims
(see claim 7).
According to the Examiner, even though Yabuki describes a range of
carbon content (0.55-1.9%) differing from the claimed range (0.2-0.42%),
the claimed range “is a judicious selection” from the range 0.2-1.0%
Appellants disclose in their Specification at page 5, line 2 and page 6, lines
16-25 (Answer 3). Further, according to the Examiner, “the range of 0.2 to
.42 wt% carbon would not define patentably over 0.55 to 1.9 wt%, since the
criticality of the more narrow claimed C range has not been established by
applicant (i.e. by comparative test data).” (Answer 3).
Appellants contend that the Examiner has improperly relied upon
Appellants’ Specification in determining obviousness and, in fact, one of
ordinary skill in the art would not have found it obvious to modify the
carbon concentration of Yabuki because Yabuki discloses that the
advantages described in the reference will not be obtained when less than
0.55% carbon is included in the steel (Br. 9-12; Reply Br. 5-7).
The Examiner responds that she is not suggesting that the carbon
content be reduced and she again repeats that the claimed range “is a
judicious selection” from the broader range disclosed in the Specification
and criticality of the claimed range has not been shown (Answer 8 at ¶ 2).
The Examiner further contends that Appellants have misunderstood the
reason for citing the Appellants’ disclosure, stating that the reason is to show
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