Appeal No. 94-3007
Application 07/809,039
presented in this case, we find that the examiner’s rejection
of appellants’ claims under 35 U.S.C. § 103 is based
essentially on the examiner’s finding that persons having
ordinary skill in the pertinent art reasonably would have
expected that all new position isomers and/or anhydides of
known compounds would exhibit the same or substantially the
same properties as their known counterpart. In short, the
examiner has in this case applied what appears to this panel
to be a per se rule of obviousness which applies irrespective
of the types of compounds claimed and the weight of the
evidence of record relevant to the patentability issues. To
withhold the patentability of the compounds presently claimed
under 35 U.S.C. § 103 based on a per se rule of obviousness is
a legal error. See In re Ochiai, 71 F.3d 1565, 1572, 37
USPQ2d 1127, 1133 (Fed. Cir. 1995):
The use of per se rules, while undoubtedly less
laborious than a searching comparison of the claimed
invention -- including all its limitations -- with the
teachings of the prior art, flouts section 103 and the
fundamental case law applying it. Per se rules that
eliminate the need for fact-specific analysis of claims
and prior art may be administratively convenient for
PTO examiners and the Board. . . . But reliance on per
se rules of obviousness is legally incorrect and must
cease.
To better understand the examiner’s rejection, we need
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