Appeal No. 1997-1390
Application 08/443,616
DELIBERATIONS
Our deliberations in this matter have included evaluation and review of the following
materials: (1) the instant specification, including all of the claims on appeal; (2) applicants'
Appeal Brief; (3) the Examiner's Answer; and (4) the above-cited prior art reference.
On consideration of the record, including the above-listed materials, we affirm the
examiner's rejection under 35 U.S.C. § 103.
DISCUSSION
The reliance on per se rules of obviousness, eliminating the need for a fact-specific
analysis of claims and the prior art, is legally incorrect and must cease. In re Ochiai, 71
F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995). By the same token, we follow
precedent and guidance handed down in the relevant case law by our reviewing court. In
this regard, the examiner invites attention to the following cases:
In re Wood, 582 F.2d 638, 199 USPQ 137 (CCPA 1978); In re Hoke, 560 F.2d 436,
195 USPQ 148 (CCPA 1977); and In re Lohr, 317 F.2d 388, 137 USPQ 548 (CCPA
1963).
Each reported case, like the situation before us, involves a claimed compound
differing from the closest prior art compound in that the former contains two additional
methyl groups. For example, Mitsuda compound (III) illustrated in In re Wood,
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