Ex parte SOWERBY - Page 4




          Appeal No. 94-4429                                                         
          Application 07/910,967                                                     
          1127, 1133 (Fed. Cir. 1995), “reliance on per se rules of                  
          obviousness is legally incorrect and must cease.”   The court              
          further stated:                                                            
                    Mere citation of Durden, Albertson, or any other                 
                    case as a basis for rejecting process claims that                
                    differ from the prior art by their use of                        
                    different starting materials is improper, as it                  
                    sidesteps the fact-intensive inquiry mandated by                 
                    section 103.  In other words, there are not                      
                    “Durden obviousness rejections” or “Albertson                    
                    obviousness rejections,” but rather only section                 
                    103 obviousness rejections.  71 F.3d at 1570,                    
               37 USPQ2d at 1132.                                                    
               When an examiner is determining whether a claim should be             
          rejected under 35 U.S.C.  103, the claimed subject matter as a            
          whole must be considered.  See Ochiai, 71 F.3d at 1569, 37 USPQ2d          
          at 1131.  The subject matter as a whole of process claims                  
          includes the starting materials and product made.  When the                
          starting and/or product materials of the prior art differ from             
          those of the claimed invention, the examiner has the burden of             
          explaining why the prior art would have motivated one of ordinary          
          skill in the art to modify the materials of the prior art process          
          so as to arrive at the claimed invention.  See Ochiai, 71 F.3d at          
          1570, 37 USPQ2d at 1131.  In the present case, the examiner has            
          not carried this burden.                                                   
               The examiner further argues that appellant’s specification            
          includes some of the prior art aldehydes (answer, page 5).  This           

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