Appeal No. 1997-3644 Page 4
Application No. 08/120,041
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 and must cease.” Moreover, the mere
possibility that the prior art could be modified such that
appellant’s process is carried out is not a sufficient basis
for a prima facie case of obviousness. See In re Brouwer, 77
F.3d 422, 425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996). Also,
see § 2144.08 of the Manual of Patent Examining Procedure
(MPEP)(7th ed., Feb. 2000).
For the foregoing reasons, we find that the examiner has
not established a prima facie case of obviousness. Because we
reverse on this basis, we need not reach the issue of the
sufficiency of the asserted secondary evidence (brief, pages
10-12). See In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276,
1278 (Fed. Cir. 1987).
CONCLUSION
The decision of the examiner is reversed.
REVERSED
JOHN SMITH )
Page: Previous 1 2 3 4 5 Next
Last modified: November 3, 2007