Ex parte JOHNSON - Page 7




              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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