Appeal No. 2004-1992
Application No. 10/223,982
mandated by 35 U.S.C. § 103 (see In re Wright, 343 F.2d 761, 769-
70, 145 USPQ 182, 190 (CCPA 1965)). Further, we direct the
examiner’s attention to In re Ochiai, 71 F.3d 1565, 1570, 37
USPQ2d 1127, 1132 (Fed. Cir. 1995) and In re Brouwer, 77 F.3d
422, 425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996) wherein the
Federal Circuit has held that the claimed invention as a whole
must be evaluated under the standards set down in Graham v. John
Deere Co., 383 U.S. 1, 17-18 , 148 USPQ 459, 466 (1966) and its
progeny, and that the use of per se rules is improper in applying
the test for obviousness under 35 U.S.C. § 103 since such rules
are inconsistent with the fact-specific analysis of claims and
prior art mandated by section 103.
From our perspective, the only suggestion to combine the
teachings of the applied references in the manner proposed by the
examiner is found in the luxury of the hindsight accorded one who
first viewed appellants’ disclosure. This, of course, is
improper. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992). This being the case, the teachings of
Ramirez and Ruff fail to establish a prima facie case of
obviousness with regard to the subject matter recited in
independent claims 1, 22, 31 and 39 or, it follows, dependent
claims 3-21, 23-30, 32-34 and 36-38. Accordingly, we shall not
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