Appeal No. 1996-1777 Page 4
Application No. 08/034,009
§ 103 Rejection of Claims 1-23
The examiner acknowledges that Akioka '241 does not teach
the use of a copper containing alloy as is used in the claimed
process. According to the examiner, however, "... the
application of a known process such as the process taught by
Akioka et al. to a different starting material does not lend
patentability to the newly claimed process ..." (answer, page
3). We disagree. In our view, the case law cited by the
examiner in support of this proposition, In re Durden, 763
F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985) and In re Kanter, 399
F.2d 249, 158 USPQ 331 (CCPA 1968) at page 3 of the answer
does not establish a universal rule regarding the obviousness
of process claims that distinguish over a prior art process by
the processing of different materials therein. As stated by
our reviewing court in In re Ochiai, 71 F.3d 1565, 1572, 37
USPQ2d 1127, 1133 (Fed. Cir. 1995), “reliance on per se rules
of obviousness is legally incorrect and must cease.” Since
the only rationale proffered by the examiner is premised on
such a per se rule, we will not sustain the stated rejection.
Rejections of Claim 24
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