Appeal No. 1997-3045
Application 08/286,835
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.
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
appellants’ carboxylated amino-1,3,5-triazine by reacting
appellants’ starting amine compound with carbon dioxide in the
presence of a base, 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
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