Appeal No. 2006-2378 Page 5
Application No. 10/433,388
that it would have been prima facie obvious to have reversed the order of the steps in
WO ‘372 “because it has been held that merely reversing the order of steps in a multi
step process is not a patentable modification, absent evidence to the contrary.”
Answer, page 4, citing Ex parte Rubin, 128 USPQ 440 (Bd. Pat. App. Int. 1959). The
examiner did not provide any additional rationale to support the assertion that it would
have been obvious to switch the order of the steps in the prior art process.
We do not agree with the examiner that the cited references render claims 1-11
prima facie obvious. MPEP § 2144.04 provides the following guidance on relying on
legal precedent to support the rationale in obviousness rejections (emphases added):
[I]f the facts in a prior legal decision are sufficiently similar to those in an
application under examination, the examiner may use the rationale used
by the court. Examples directed to various common practices which the
court has held normally require only ordinary skill in the art and hence are
considered routine expedients are discussed below. If the applicant has
demonstrated the criticality of a specific limitation, it would not be
appropriate to rely solely on case law as the rationale to support an
obviousness rejection.
MPEP § 2144.04(IV)(C) cites Rubin, among other cases, for the proposition that
changes in the sequence of adding ingredients can be considered prima facie obvious.
We recognize that the examiner tried to follow the MPEP in applying Rubin.
However, in our view, the examiner has not adhered to the requirement of MPEP
§ 2144.04, emphasized supra, that “[i]f the applicant has demonstrated the criticality of
a specific limitation, it would not be appropriate to rely solely on case law as the
rationale to support an obviousness rejection.”
The specification makes it clear that Appellants consider the change in the order
of process steps to be a critical limitation. As noted supra, page 3 of the specification
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