Appeal No. 2006-2378 Page 7
Application No. 10/433,388
would not hold when changing the order of steps in a sequential multi-step organic
synthesis.
Moreover, the pending rejection applies a per se rule of obviousness without
providing a fact-based explanation as to why one would reasonably expect to obtain the
claimed compound if the order of steps in the prior art were reversed. The rejection
therefore is contrary to the holding in In re Ochiai, 71 F.3d 1565, 37 USPQ2d 1127
(Fed. Cir. 1995).
In Ochiai, the court emphatically rejected the use of per se rules when making
obviousness rejections. 71 F.3d at 1572, 37 USPQ2d 1133 (“[R]eliance on per se rules
of obviousness is legally incorrect and must cease.”). The court reasoned that “section
103 requires a fact-intensive comparison of the claimed process with the prior art rather
than the mechanical application of one or another per se rule.” Id. at 1571, 37 USPQ2d
at 1132. Stating that the court’s “precedents do not establish any per se rules of
obviousness,” the court directed that claims should be examined “in light of all . . .
relevant factors, free from any presumed controlling effect” of precedent. Id. at 1572,
37 USPQ2d at 1133, quoting In re Dillon, 919 F.2d 688, 695, 16 USPQ2d 1897, 1903
(Fed. Cir. 1990.)
We agree that precedent should be considered when assessing whether claimed
subject matter is obvious, in the manner discussed in MPEP § 2144. However, Ochiai
makes it clear that the obviousness inquiry does not end with the examination of
precedent. 71 F.3d, at 1572, 37 USPQ2d at 1133. Rather, a proper obviousness
evaluation also requires “a fact-intensive” comparison between the claims and prior art.
Id. at 1571, 37 USPQ2d at 1132.
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