Appeal No. 95-0761
Application 08/050,511
court further stated:
Mere citation of Durden, Albertson, or any other case as a basis for
rejecting process claims that differ from the prior art by their use of
different starting materials is improper, as it sidesteps the fact-intensive
inquiry mandated by section 103. In other words, there are not “Durden
obviousness rejections” or “Albertson obviousness rejections,” but rather
only section 103 obviousness rejections. 71 F.3d at 1570, 37 USPQ2d at
1132.
When an examiner is determining whether a claim should be rejected under 35 U.S.C.
§ 103, the claimed subject matter as a whole must be considered. See Ochiai, 71 F.3d at 1569, 37
USPQ2d at 1131. The subject matter as a whole of process claims includes the starting materials
and product made. When the starting and/or product materials of the prior art differ from those
of the claimed invention, the examiner has the burden of explaining why the prior art would have
motivated one of ordinary skill in the art to modify the materials of the prior art process so as to
arrive at the claimed invention. See Ochiai, 71 F.3d at 1570, 37 USPQ2d at 1131. The examiner
has not provided such an explanation.
The examiner argues that appellant’s claims, because the transition term is “comprising”,
are open to additional layers (answer, page 8). This argument is not convincing because,
regardless of whether appellant’s article and method can include other layers, the examiner has
not explained why the references disclose or would have suggested, to one of ordinary skill in the
art, the particular combination of layers recited in appellant’s claims.
For the above reasons, we conclude that the examiner has not carried his burden of
establishing a prima facie case of obviousness of appellant’s claimed article or method.
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007