Appeal 2007-0873
Application 10/395,236
that Appellants do not have support for and had not established criticality of
the amended range (Answer 8 at ¶ 3).
The dispositive issue arising from these contentions is: Has the
Examiner established that the carbon range of claim 7 would have been
obvious based on the knowledge of those of ordinary skill in the art at the
time of the invention?
B. Facts
All the claims are directed to a cast steel containing from 0.2-0.42%
carbon (Claim 7).
Yabuki describes a cast steel containing 0.55-1.9% carbon (Abstract).
The carbon acts to ensure outstanding wear resistance, as well as weldability
and castability (Yabuki 10, last para.). Those properties, according to
Yabuki, cannot be obtained when the steel contains less than 0.55% carbon
(id.).
No rejection on the basis of lack of written descriptive support under
35 U.S.C. § 112, ¶ 1 is before us.
C. Principles of Law
The examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). In order to establish a prima facie case of obviousness, the
examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
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