Appeal No. 1996-2718
Application No. 08/221,207
incorrect and must cease. Any such administrative convenience is simply inconsistent
with section 103, which, according to Graham [v. John Deere Co., 383 U.S. 1, 148
USPQ 459 (1966)] and its progeny, entitles an applicant to issuance of an otherwise
proper patent unless the PTO established that the invention as claimed in the application
is obvious over cited prior art, based on the specific comparison of that prior art with
claim limitations. We once again hold today that our precedents do not establish any
per se rules of obviousness, just as those precedents themselves expressly declined to
create such rules. Any conflicts as may be perceived to exist derive from an
impermissible effort to extract per se rules from decisions that disavow precisely such
extraction.
To paraphrase the court in Ochiai, 71 F.3d at 1570, 37 USPQ2d at 1132, "there are not [Pfeiffer]
obviousness rejections . . . but rather only section 103 obviousness rejections."
Since the rejection of claims 1-4, 7, 8, and 10 as unpatentable over Walz in view of Bock has
been reversed, the separate rejection of dependent claim 6 as unpatentable over Walz in view of Bock
and Wagner must be set aside as well. Wagner also fails to provide the necessary teachings or
suggestions which Walz and Bock lack. While Wagner teaches "fine mineral fibers, in particular glass
fibers and diabase fibers" at col. 1, lines 5-10, the reference does not teach flexible superconducting
fibers of the type presently claimed nor has the examiner pointed to any suggestion in the reference
about modifying the teachings of Walz or Bock to arrive at the flexible superconducting fibers presently
claimed. Moreover, the reference teaches heating the fiberizing gas to 800-1400EC (1472-2552EF) at
col. 4, lines 19-25, which "teaches away" from the 150-750EF presently claimed. Prior art references
must be considered in their entireties, i.e., as a whole, including portions that would lead away from the
claimed invention. See W.L. Gore & Associates, Inc. v. Garlock, 721 F. 2d 1540, 1550, 220 USPQ
303, 311 (Fed. Cir. 1983), cert. den., 469 U.S. 851 (1984).
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