Appeal No. 1997-1371
Application 08/213,290
To the extent that the examiner may be extracting a per se rule from either Korpi or Brown
that recycling of unreacted or incompletely processed materials is conventional and thus
an obvious modification to any process, we point out that there are no per se rules when
determining obviousness under 35 U.S.C. § 103. As stated in In re Ochai, 71 F.3d 1565,
1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995):
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 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
[Korpi/Brown] obviousness rejections...but rather only section 103 obviousness rejections.”
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