Appeal No. 95-0448
Application 07/825,632
subsequent applications. As stated in In re Brouwer, 77 F.3d
422, 425-26, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996):
The Examiner erred by resting his prima
facie case of obviousness on the purportedly
controlling nature of our decision in Durden
rather than on particularized findings,
required by Graham, 383 U.S. at 17, regarding
a set of one or more references that would
make the claimed process obvious, an error
the Board failed to correct. As we clearly
indicated in In re Dillon, a recent in banc
decision, “[w]hen any applicant properly
presents and argues suitable method claims,
they should be examined in light of all ...
relevant factors, free from any presumed
controlling effect of Durden” or any other
precedent. 919 F.2d 688, 695, 16 USPQ2d 1897,
1903 (Fed. Cir. 1990) (in banc) cert. denied,
500 U.S. 904 (1991). See also In re Ochiai,
72 F.3d 1565, 1570, 37 USPQ2d 1127, 1132
(Fed. Cir. 1995) (“[T]here are not 'Durden
obviousness rejections’ or 'Albertson
obviousness rejections,’ but rather only
section 103 obviousness rejections.”).
Having compared Brouwer’s claims to the prior
art of record, we reverse the rejection of
claims 8 through 27 as an incorrect conclusion
reached by an incorrect methodology.
Thus, we review the examiner’s findings of fact and follow
Graham v. John Deere, Co., 383 U.S. 1, 148 USPQ 459 (1966) to
avoid reaching an incorrect conclusion by an incorrect
methodology.
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