Ex Parte Yamadera et al - Page 5

                Appeal 2007-2242                                                                                 
                Application 10/352,997                                                                           
                       10. Lee teaches that, with regard to N, “if the content of N exceeds                      
                0.27%, then the austenite phase is too much reinforced, with the result that                     
                the hot ductility is decreased” (Lee, p. 4, 56-57).                                              
                                                  Discussion                                                     
                       “[T]he Board must weigh each reference for its power to suggest                           
                solutions to an artisan of ordinary skill.”  In re Young, 927 F.2d 588, 591, 18                  
                USPQ2d 1089, 1091 (Fed. Cir. 1991).  “The quantum of evidence required                           
                to establish unobviousness will depend upon the strength of the showing of                       
                obviousness made by the prior art.”  In re Skoll, 523 F.2d 1392, 1398, 187                       
                USPQ 481, 485 (CCPA 1975).  “[T]he question under 35 U.S.C. 103 is not                           
                merely what the references expressly teach, but what they would have                             
                suggested to one of ordinary skill in the art at the time the invention was                      
                made.”  In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA                               
                1976).                                                                                           
                       In this case, there is evidence weighing for and against patentability.                   
                The evidence favoring unpatentability must be properly weighed against all                       
                the countervailing evidence.  See Piasecki, 745 F.2d at 1472, 223 USPQ at                        
                788; See also Skoll, 523 F.2d at 1397-98, 187 USPQ at 484-485.  Lee most                         
                broadly teaches duplex stainless steels having element mass percentages                          
                within the limits of the claimed percentage ranges required for each of C,                       
                Mn, P, and S.  Furthermore, for Si, P, Mo, and W, Lee’s teaching as a whole                      
                reasonably suggests element mass percentages within Applicants’ claimed                          
                ranges.  However, the element mass percentages Applicants’ claims require                        
                for Cu, Ni, Cr, and N differ from those preferred and/or exemplified by Lee.                     
                On the other hand, as we explain below, Lee’s broadest teaching is suspect                       



                                                       5                                                         

Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  Next

Last modified: September 9, 2013