Appeal no. 97-1293
Application no. 08/281,812
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 establishes 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, at 71 F.3d at 1570, 37 USPQ2d at 1132, "there are not
[Aller] obviousness rejections . . . but rather only section 103 obviousness rejections."
The facts in the record must support the legal conclusion of obviousness. As set
forth in In re Cofer, 354 F.2d 664, 667, 148 USPQ 268, 271 (CCPA 1966):
Necessarily, it is facts appearing in the record, rather than prior decisions in and of
themselves, which must support the legal conclusion of obviousness under 35
U.S.C. 103. Merely stating that a compound or composition is obvious, without
adequate factual support, is not sufficient.
Hence, a simple statement that it would have been obvious to optimize the method
conditions and properties of the final product is insufficient to establish a prima facie case
of obviousness. See In re Antonie, 559 F.2d 618, 620, 195 USPQ 6, 8 (CCPA 1977).
While Aller contains language about optimizing ranges the prior art reference in that
case was an article describing one experiment, apparently without disclosing any ranges.
See In re Aller, supra, 220 F.2d at 456, 105 USPQ at 235. Here, by contrast, both Lukacs
and Yajima disclose several examples with sintering temperatures, and further, Yajima
teaches a range of sintering temperatures up to 2000EC. Yajima expressly teaches a
range of temperatures and the examiner has provided no evidence for optimizing the
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