Appeal 2007-0873
Application 10/395,236
D. Analysis
In the case before us, the Examiner has not shown that each and every
limitation of the claim is either described or suggested by the prior art or
would have been obvious based on the knowledge of the ordinary artisan
working in the cast steel art. See In re Fine, 837 F.2d at 1074, 5 USPQ2d at
1598.
The Examiner acknowledges that Yabuki does not describe or suggest
the carbon concentration required by the claims. In fact, Yabuki specifically
teaches that the strength and castability properties that Yabuki desires, and
Appellants also focus on, will not be obtained at carbon concentrations of
less than 0.55%, a level much above the claimed upper limit of 0.42%. This
is a teaching away from Appellants’ invention. See In re Geisler, 116 F.3d
1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997) (quoting In re
Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 533 (CCPA 1974)(“A
prima facie case of obviousness can be rebutted if the applicant ... can show
‘that the art in any material respect taught away’ from the claimed
invention.”).
The Examiner relies upon Appellants’ own disclosure of their
invention and seeks to shift the burden to the Appellants to show criticality
of their claimed range based on the broader range disclosed in the
Specification. It is not proper to rely upon Appellants’ own disclosure of
their invention in the Specification in this context. A claimed invention is
unpatentable if the differences between it and the prior art are such that the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the pertinent art. 35 U.S.C.
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