Appeal No. 95-2958
Application 08/108,570
art 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.”
When an examiner is determining whether a claim should be
rejected under 35 U.S.C. § 103, the claimed subject matter as
a whole must be considered. See Ochiai, 71 F.3d at 1569, 37
USPQ2d at 1131. The subject matter as a whole of process
claims includes the starting materials and product made. When
the starting and/or product materials of the prior art differ
from those of the claimed invention, the examiner has the
burden of explaining why the prior art would have led one of
ordinary skill in the art to modify the materials of the prior
art process so as to arrive at the claimed invention. See
Ochiai, 71 F.3d at 1570, 37 USPQ2d at 1131. The examiner has
not provided such an explanation.
The examiner argues that in Minklei’s Example 2, 8.4% of
the product is not identified, and it is reasonable to assume
that at least a small amount of this material is a product
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