Appeal No. 1998-0365
Application No. 08/501,336
The references relied upon by the examiner are:
Barnes et al. (Barnes) 5,284,863 Feb. 8, 1994
Doehner et al. (Doehner) 5,359,090 Oct. 25, 1994
GROUND OF REJECTION4
Claims 1-3, 5-6 and 9-16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Doehner in view of Barnes.
We reverse.
DISCUSSION
Every case, particularly those raising the issue of obviousness under section
103, must necessarily be decided upon its own facts. In re Jones, 958 F.2d 347,
350, 21 USPQ2d 1941, 1943 (Fed. Cir. 1992). Furthermore, our appellate
reviewing court has made it clear that there are no per se rules of obviousness or
nonobviousness. 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.”) Accord, In
re Brouwer, 77 F.3d 422, 425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996).
According to the examiner (Answer, page 4) Doehner disclose “pyrrole
derivatives, structurally similar to the instant claimed compounds, which are highly
effective insecticidal, fungicidal and acaricidal, etc. agents….” The examiner
argues (Answer, page 4) that “[t]he difference between the compounds of the prior
4 Rejections not referred to in the Answer are assumed to have been withdrawn.
Paperless Accounting, Inc. v. Bay Area Rapid Transit Sys., 804 F.2d 659, 663, 231
USPQ 649, 651-652 (Fed. Cir. 1986), cert. denied, 480 U.S. 933 (1987).
2
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