Appeal 2007-0873
Application 10/395,236
§ 103(a) (2000) (emphasis added). Before the burden can be shifted, the
Examiner must establish obviousness based on teachings and knowledge
within the prior art. This the Examiner has not done here.
To the extent that the Examiner is contending that the claimed range
lacks support in the Specification, we note that no rejection under 35 U.S.C.
§ 112, ¶ 1 for lack of written descriptive support is before us.
III. CONCLUSION
The Examiner has not established that the carbon range of the claims
would have been obvious to one of ordinary skill in the cast steel art based
on the knowledge of those of ordinary skill in the art at the time of the
invention.
Because the Key to Steel reference was applied to meet other
limitations in claim 9, this reference, as relied upon by the Examiner, does
not cure the defect within the primary rejection.
IV. DECISION
With respect to the Examiner’s decision to reject claims 7, 8, 10, and
11 as obvious under 35 U.S.C. § 103(a) over Yabuki and claim 9 as obvious
under 35 U.S.C. § 103(a) over Yabuki as evidenced by the Key to Steel
reference, we REVERSE.
REVERSED
clj
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