Appeal No. 1997-2196
Application No. 08/138,581
that the applied references would have indicated to one of
ordinary skill in the art that appellants’ amino-triazines and
the amines of the references react similarly.
Appellants argue, in reliance upon In re Brouwer, 77 F.3d
422, 425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996) and In re
Ochiai,
71 F.3d 1565, 1570, 37 USPQ2d 1127, 1131 (Fed. Cir. 1995),
that the examiner improperly has applied a per se rule of
obviousness (reply brief, page 2). The examiner does not
respond to this argument.
As argued by appellants, the examiner’s position that
application of a known process to a new starting material
would
have been obvious to one of ordinary skill in the art (answer,
pages 3, 5 and 6) is based upon a per se rule. As stated by2
the court 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
The examiner mentions U.S. Patent 5,084,541 to Jacobs (answer, page2
6). This reference is not included in the statement of the rejection and,
therefore, is not properly before us. See In re Hoch, 428 F.2d 1341, 1342
n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007