Appeal No. 1996-2718
Application No. 08/221,207
invention was made. See In re Dembiczak, 175 F.3d 994, 998, 50 USPQ2d 1614, 1616 (Fed. Cir.
1999); and In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Reliance
on the present specification to provide that suggestion constitutes impermissible hindsight. See Oetiker,
977 F.2d at 1447, 24 USPQ2d at 1445-1446.
The examiner further relies upon Ex parte Pfeiffer, 135 USPQ 31, 33 (Bd. App. 1961) for the
proposition that structural limitations are not given weight in a method claim unless those limitations
"affect the method in a manipulative sense and not amount to mere claiming of a particular structure."10
In effect, the examiner has labeled the claim limitation as a "structural limitation" and then extracted a per
se rule from Pfeiffer that structural limitations do not patentably distinguish over the prior art in a method
claim. The court made it clear in In re Ochiai, 71 F.3d 1565, 37 USPQ2d 1127 (Fed. Cir. 1995) that
there are no per se rules when determining obviousness under 35 U.S.C. ' 103. As stated in Ochiai,
71 F.3d at 1572, 37 USPQ2d at 1133:
The use of per se rules, while undoubtedly less laborious than a searching comparison
of the claimed invention - including all its limitations - with the teachings of the prior art,
flouts section 103 and the fundamental case law applying it. Per se rules that eliminate
the need for fact-specific analysis of claims and prior art may be administratively
convenient for PTO examiners and the Board. Indeed, they have been sanctioned by
the Board as well. But reliance on per se rules of obviousness is legally
10 Supra, pp. 6 and 12.
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