Appeal No. 95-2142
Application No. 07/996,423
of making a non-obvious product (the particular fiber) from a non-obvious starting
material (the polyesteramide). Note that applicants[’] claims merely provide a
conventional method for obtaining a fiber, i.e. melt-spinning. There is no particular
novelty evident in the claimed process steps which produce a non-obvious type
of fiber.
Examiner’s Answer, p. 5-6.
The continued viability of a Durden-type rejection was brought into question in In re Dillon, 919
F.2d 688, 695, 16 USPQ2d 1897, 1903 (Fed. Cir. 1990) (in banc), cert. denied, 500 U.S. 904 (1991).
The court therein stated:
Suffice it to say that we do not regard Durden as authority to reject as obvious
every method claim reading on an old type of process, such as mixing, reacting,
reducing, etc. The materials used in a claimed process as well as the result
obtained therefrom, must be considered along with the specific nature of the
process, and the fact that new or old, obvious or nonobvious, materials are used
or result from the process are only factors to be considered, rather than conclusive
indicators of the obviousness or nonobviousness of a claimed process. When any
applicant properly presents and argues suitable method claims, they should be
examined in light of all these relevant factors, free from any presumed controlling
effect of Durden. Durden did not hold that all methods involving old process steps
are obvious; the court in that case concluded that the particularly claimed process
was obvious; it refused to adopt an unvarying rule that the fact that nonobvious
starting materials and nonobvious products are involved ipso facto makes the
process nonobvious. Such an invariant rule always leading to the opposite
conclusion is also not the law.
The Court of Appeals for the Federal Circuit has most recently spoken on this issue in In re Ochiai,
71 F.3d 1565, 1569, 37 USPQ2d 1127, 1131 (Fed. Cir. 1995). The court, in reversing a Durden-type
rejection, cast out the “method of making” and “method of using” distinctions which had previously existed
in patentability jurisprudence. The court emphasized that § 103 requires consideration of the invention as
a whole. The court stated:
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