Appeal No. 2002-1364 Page 5
Application No. 09/402,761
obvious to change the sequence of adding reagents in the absence of new or
unexpected results." Again, referring to MPEP § 2144.04 IV. C. "and the case law cited
therein," the examiner argues that "in the absence of new or unexpected results, a
change is [sic] the sequence of adding ingredients in a process is prima facie obvious"
(id. at page 6, last paragraph).
We caution, however, that reliance on per se rules of obviousness is legally
incorrect. 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.
We also note In re Cofer, 354 F.2d 664, 667, 148 USPQ 268, 271 (CCPA 1966), stating
that "it is facts appearing in the record, rather than prior decisions in and of themselves,
which must support the legal conclusion of obviousness under 35 U.S.C. § 103."
On this record, the examiner has not established that the cited prior art would
have led a person having ordinary skill to the invention recited in claim 11 including
(a) providing a catalytically active mixture containing an alkali metal carbonate and a
fatty acid lower alkyl ester having formula (I); (b) providing an emulsifier mixture
containing a glycose component having from 5 to 12 carbon atoms, and a carbohydrate
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