Appeal No. 1997-2565
Application 08/382,588
in In re Ochiai, 71 F.3d 1565, 37 USPQ2d 1127 (Fed. Cir. 1995) that there are no per se
rules when determining obviousness under 35 U.S.C. § 103. As stated 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 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 [Levin] obviousness rejections . . . but rather only section 103 obviousness
rejections.
In order to properly determine whether the subject matter of a claim as a whole
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