Appeal No. 95-0761
Application 08/050,511
The examiner argues that Incremona discloses (col. 8, line 44) the use of pigmented
adhesives in dry transfer graphics articles, and that it would have been obvious to one of ordinary
skill in the art to use a pigmented adhesive in the Arnold, Hochner and Rosenfeld articles (answer,
page 5). Appellant does not challenge this argument.
Regarding the method claims, the examiner argues (answer, page 6) that
at least the great majority, if not all, of the claimed nominal method steps are
disclosed by each of the three relied upon combination rejections, and as such the
Examiner has chosen to additionally rely upon the doctrine of in re Durden [sic],
763 F. 2d [sic] 1406, 222 USPQ 359, as further modified by ex parte Kifer [sic], 5
USPQ 2d [sic] 1904, that a process is not patentable for the sole reason that it uses
as an intermediate or makes a product that is patentable, which seems clearly
applicable.
This argument is not convincing because the examiner has not pointed out, and it is not
apparent, where the particular method steps recited in appellant’s claims are disclosed in or would
have been suggested to one of ordinary skill in the art by the relied-upon references. The
examiner’s broad statement that “at least the great majority, if not all, of the claimed nominal
method steps are disclosed by each of the three relied upon combination rejections” (answer, page
6) is not sufficient for establishing prima facie obviousness of the particular method claimed by
appellant.
As for the examiner’s reliance on a per se rule that a process is not patentable solely
because it uses a patentable intermediate or makes a patentable product (answer, page 6), the
Federal Circuit stated in In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir.
1995), that “reliance on per se rules of obviousness is legally incorrect and must cease.” The
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007