Appeal No. 96-0021
Application No. 08/105,820
For both rejections based on § 103, the examiner advances
the rationale that the process steps of “mix-align-compress-
sinter” are well known and it would have been obvious to apply
these steps to any NdFeB compositions, citing In re Durden2
and In re Kanter as authority (Answer, pages 3-9).3
We do not agree with the examiner’s rationale for two
reasons. First, “[w]hen any applicant properly presents and
argues suitable method claims, they should be examined in
light of all ... relevant factors, free from any presumed
controlling effect of Durden” or any other precedent. 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
examiner has not compared the claimed subject matter as a
whole with the prior art, i.e., including the specific
composition limitations of the claimed subject matter on
appeal. See generally In re Brouwer, 77 F.3d 422, 37 USPQ2d
1663 (Fed. Cir. 1996); In re Ochiai, 71 F.3d 1565, 37 USPQ2d
1127 (Fed. Cir. 1995).
2763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985).
3399 F.2d 249, 158 USPQ 331 (CCPA 1968).
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