Appeal No. 1997-3221
Application No. 08/249,241
Ex parte Movva, 31 USPQ2d 1027 (Bd. Pat. App. & Int. 1993), and In re Anderson,
391 F.2d 953, 157 USPQ 277 (CCPA 1968) are by far the most relevant in
deciding the issues in this family of appeals.
However, we note that obviousness is a legal conclusion based on the
underlying facts. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459,
467 (1966); Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1270,
20 USPQ2d 1746, 1750 (Fed. Cir. 1991); Panduit Corp. v. Dennison Mfg. Co., 810
F.2d 1561, 1566-68, 1 USPQ2d 1593, 1595-97 (Fed. Cir. 1987), cert. denied, 481
U.S. 1052 (1987).
To the extent that the examiners and appellants would argue that the cited
case law stands for the proposition that a per se rule exits when relying upon so-
called methodology in determining the patentability of claims, we point out that,
since the decisions in Bell and Deuel, our appellate reviewing court has made it
clear that there are no per se rules of obviousness or nonobviousness. In re Ochiai,
71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995)(“reliance on per se
rules of obviousness is legally incorrect.”) Accord,
In re Brouwer, 77 F.3d 422, 425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996).
A per se approach would be in conflict with long standing precedent as to the
relevance of the method of making a product to the obviousness of the product.
Note In re Payne, (“[a]n invention is not ‘possessed’ absent some known or obvious
way to make it.”) citing In re Hoeksema, 399 F.2d 269, 274, 158 USPQ 596, 601
(CCPA 1968). In a similar manner, the court in In re
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