Ex parte AKIOKA et al. - Page 4




          Appeal No. 1996-1777                                       Page 4           
          Application No. 08/034,009                                                  

                            103 Rejection of Claims 1-23                             
               The examiner acknowledges that Akioka '241 does not teach              
          the use of a copper containing alloy as is used in the claimed              
          process.  According to the examiner, however, "... the                      
          application of a known process such as the process taught by                
          Akioka et al. to a different starting material does not lend                
          patentability to the newly claimed process ..." (answer, page               
          3). We disagree.  In our view, the case law cited by the                    
          examiner in support of this proposition, In re Durden, 763                  
          F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985) and In re Kanter, 399              
          F.2d 249, 158 USPQ 331 (CCPA 1968) at page 3 of the answer                  
          does not establish a universal rule regarding the obviousness               
          of process claims that distinguish over a prior art process by              
          the processing of different materials therein.  As stated by                
          our reviewing court 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.”  Since                 
          the only rationale proffered by the examiner is premised on                 
          such a per se rule, we will not sustain the stated rejection.               
                               Rejections of Claim 24                                 









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