Appeal No. 94-2062
Application 07/870,841
The examiner reached his conclusion of obviousness of
appellants’ claimed invention based on a per se rule that use
of a new starting material in a prior art process or making a
new product by such a process would have been obvious to one
of ordinary skill in the art. As stated by the Federal
Circuit in In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 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.
In re Ochiai, 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
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