Appeal No. 95-3754
Application 08/138,780
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. 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 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 motivated one of ordinary skill in the
art to modify the materials of the prior art process so as to produce the particular
product recited in appellants’ claims. See Ochiai, 71 F.3d at 1570, 37 USPQ2d at
1131.
The examiner argues that one of ordinary skill in the art would have been
motivated to use appellants’ starting materials due to the reasonable expectation of
obtaining the corresponding known useful product (answer, page 4). The examiner has
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