Appeal 2007-2242
Application 10/352,997
0.27%, the hot ductility is decreased (Lee, p. 4, ll. 57-58). As hot ductility is
a property particularly sought by Lee (Lee, p. 3, ll. 6–7), evidence that some
particular benefit known to the prior art arises from similar steel alloys with
high N content would be highly desirable to avoid falling into the trap of
hindsight reconstruction of Applicant's claimed invention, In the present
case, the Examiner has not directed our attention to any such teachings, but
merely relies on the general teachings of Lee.
The record indicates that the teaching in Lee as a whole would not
have directed one of ordinary skill in the art to Applicants’ claimed ranges
for each of Cu, Ni, Cr, and N. While the Supreme Court recently rejected a
rigid application of the teaching, suggestion, or motivation test in an
obviousness inquiry in KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82
USPQ2d 1385 (2007), the Court acknowledged the importance of
identifying “a reason that would have prompted a person of ordinary skill in
the relevant field to combine the elements in the way the claimed new
invention does.” Id at 1731, 82 USPQ2d at 1396. Furthermore, it is not
unreasonable to require the prior art to provide some reason to alter a known
chemical composition in a particular manner to establish the obviousness of
a claimed chemical composition. See Takeda Chem. Indus., Ltd. v.
Alphapharm Pty., Ltd., ____ F.3d ____, _____, 83 USPQ2d 1169, 1174
(Fed. Cir. 2007).
While Lee provides some evidence against the patentability of the
chemical composition Applicants claim, this evidence is far outweighed by
the evidence favoring patentability. Accordingly, the Examiner has not
made a case for the obviousness of the composition of Applicants’ Claim 1.
All claims stand with Claim 1.
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