Appeal No. 96-0724
Application No. 07/817,232
In re Ochiai , 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1132 (Fed.2
Cir. 1995), no per se rule exist for holding the subject
matter of a process claim obvious simply because the prior art
references disclose the same general process using “similar”
starting materials. Such an approach, according to Ochiai,
”side-steps the fact-intensive inquiry” mandated by 35 U.S.C.
§ 103. Accordingly, absent a disclosure in the prior art of
the particular starting substrates (reactants) utilized in
appellants’ claimed processes, and an explanation of why it
would have been obvious to one of ordinary skill in this art
to use such starting materials in a process as claimed, the
examiner’s rejection must be reversed.
This application is remanded to the examiner to
reconsider the obviousness of the claimed invention in view of
the present record and U.S. Patent No. 4,605,655 issued to
Yevich on
August 2, 1986 and U.S. Patent No. 4,994,460 issued to
Dextraze on February 19, 1991. The latter patents are cited
in appellants’ specification as disclosing reaction products,
2The examiner’s answer was written prior to the Ochiai
decision.
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