Appeal No. 1997-2195
Application 08/102,752
1127, 1133 (Fed. Cir. 1995), “reliance on per se rules of
obviousness is legally incorrect and must cease.” The court
further stated:
Mere citation of Durden, Albertson, or any other
case as a basis for rejecting process claims that
differ from the prior art by their use of
different starting materials is improper, as it
sidesteps the fact-intensive inquiry mandated by
section 103. In other words, there are not
“Durden obviousness rejections” or “Albertson
obviousness rejections,” but rather only section
103 obviousness rejections.
Ochiai, 71 F.3d at 1570, 37 USPQ2d at 1132.
When an examiner is determining whether a claim should be
rejected under 35 U.S.C. § 103, the claimed subject matter as a
whole must be considered. See Ochiai, 71 F.3d at 1569, 37 USPQ2d
at 1131. The subject matter as a whole of process claims
includes the starting materials and product made. When the
starting and/or product materials of the prior art differ from
those of the claimed invention, the examiner has the burden of
explaining why the prior art would have motivated one of ordinary
skill in the art to modify the materials of the prior art process
so as to arrive at the claimed invention. See Ochiai, 71 F.3d
at 1570, 37 USPQ2d at 1131. The examiner has not provided such
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