Appeal No. 1996-0200
Application 08/119,444
With respect to 35 U.S.C. § 103 rejection, the examiner after giving no weight to the
term “susceptor” has also urged that the method claims “must rely upon the overall method
steps for patentability not on the specific starting materials used of products produced”
citing the decision of In re Durden, 763 F.2d 1406, 1409, 226 USPQ 359, 360-61 (Fed.
Cir. 1985). The examiner’s reliance on the Durden decision is misplaced.
Most recently, our reviewing court has stated that an examiner errs “by resting his
prima facie case of obviousness on the purportedly controlling nature of our decision in
Durden rather than on particularized findings, required by Graham [v. John Deere, 148
USPQ 459 (1966)], regarding a set of one or more references that would make the
claimed process obvious”. In re Brouwer, 77 F.3d 422, 425-26, 37 USPQ 1663, 1666
(Fed. Cir. 1996). See also In re Ochai, 71 F.3d 1565, 1570, 37 USPQ 1127, 1132 (Fed.
Cir. 1995) (“mere citation of [in re ]Durden, [In re ]Alberson, or any other case as a basis
for rejecting process claims that differ from the prior art by their use of different staring
materials is improper, as it sidesteps the fact-intensive inquiry mandated by section 103").
Accordingly, the 35 U.S.C. § 103 rejection over Chen is also reversed.
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