Appeal no. 97-1293
Application no. 08/281,812
art must teach or at least suggest the desirability of modifying the sintering step to go
above 2000EC in temperature. See In re Brouwer, 77 F. 2d 422, 425, 37 USPQ2d 1663,
1666, (Fed. Cir. 1996). The examiner has not pointed to any teaching or suggestion in
Lukacs on Yajima on the desirability of elevating the temperature for sintering above
2000EC .3
Instead, the examiner relies on In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235
(CCPA 1955), in the paragraph bridging pp. 9 and 10 of his Answer, for the rule:
Changes in temperature, concentrations, or other process conditions of an old
process within the broad teaching of the prior art does not impart patentability in the
absence of an unexpected result.
Such reliance is misplaced. In effect, the examiner labels the claimed invention as an "old
process" and then extracts a per se rule from Aller that old processes are not patentable.
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 incorrect and must
cease. Any such administrative
3In view of our finding on temperature, we do not find it necessary to discuss the other claim limitations vis-
à-vis Lukacs and Yajima, namely, titanium diboride as the ceramic powder, char characteristics, and
density.
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