Appeal No. 96-1142
Application 07/939,180
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.
Ochiai, 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 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. In the present
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