Appeal No. 2002-0941 Page 7
Application No. 09/166,445
First, as stated in In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133
(Fed. Cir. 1995):
The use of per se rules, while undoubtedly less laborious than a searching
comparison of the claimed invention--including all its limitations--with the
teachings of the prior art, flouts section 103 and the fundamental case law
applying it. Per se rules that eliminate the need for fact-specific analysis of
claims and prior art may be administratively convenient for PTO
examiners and the Board. Indeed, they have been sanctioned by the
Board as well. But reliance on per se rules of obviousness is legally
incorrect and must cease.
Second, the principle of law enunciated in Ex parte Hartop, 139 USPQ 525 (Bd.
App. 1962) has been substantially discredited in In re Cofer, 354 F.2d 664, 667-68, 148
USPQ 268, 270-71 (CCPA 1966).
Third, on this record, the examiner has not adequately explained how a person
having ordinary skill would have been led from "here to there," i.e., from the Andrews
compound having formula I to the crystalline polymorph form I recited in claims 1
through 5.
The rejection under 35 U.S.C. § 103(a) is reversed.
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