Appeal No. 1996-2321
Application No. 08/137,228
examiner has not contested appellants’ interpretation of
Bredereck in the Answer.
Finally, with respect to the obviousness of “old
processes” using different but analogous reactants, our
reviewing court has stated:
The examiner erred by indulging in an essentially
hindsight comparison of the functioning of the new
acid in claim 6 as a precursor to the claimed cephem
with that of other acids in the prior art processes
that produced other cephems. Such a comparison uses
Ochiai’s specification as though it were prior
art in order to make the claim to a method that uses
the nonobvious acid to make the nonobvious cephem
appear to be obvious. Second, the examiner
incorrectly drew from Durden, a case turning on
specific facts, a general obviousness rule: namely,
that a process claim is obvious if the prior art
references disclose the same general process using
“similar” starting materials [footnote omitted]. No
such per se rule exists.5
Similarly to Ochiai and Brouwer, supra, the examiner in
this appeal has not made the particularized fact-intensive
inquiry required by 35 U.S.C. § 103 but has instead grounded
the rejection on the supposedly controlling effect of Durden,
supra. As noted by the court in Ochiai and Brouwer, reliance
In re Ochiai, 71 F.3d 1565, 1570, 37 USPQ2d 1127, 1131-325
(Fed. Cir. 1995); see also In re Brouwer, 77 F.3d 422, 425-26,
37 USPQ2d 1663, 1666 (Fed. Cir. 1996).
5
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