Appeal No. 1997-2196
Application No. 08/138,581
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.
The examiner has not carried out the required fact specific
analysis. That is, the examiner has not explained why
evidence
relied upon by the examiner shows that one of ordinary skill
in the art would have been led to make carbonylated
derivatives of (halo)amino-1,3,5-triazines or carbamate
functional derivatives of (halo)amino-1,3,5-triazines by the
processes recited in appellants’ claims, and would have had a
reasonable expectation of success in doing so. See In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir.
1991); In re O’Farrell, 853 F.2d 894, 902, 7 USPQ2d 1673, 1680
(Fed. Cir. 1988); In re Longi, 759 F.2d 887, 892-93, 225 USPQ
645, 648 (Fed. Cir. 1985).
For the above reasons, we conclude that the examiner has
not carried his burden of establishing a prima facie case of
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007