Appeal No. 1998-0724
Application No. 08/231,287
the examiner has not addressed the specific language of the claimed invention and
applied any specific portions of the prior art references thereto.
With respect to the principle of stare decisis, we disagree with the examiner's
proposition in the examination of patent applications. First, the examiner is only a quasi
judicial official, at most, and does not have the authority to disregard the law or regulations,
as he deems appropriate. He, and this Board are bound to follow binding precedent.
Second, the case cited by the examiner is from the Supreme Court of Pennsylvania which
is not binding precedent. Therefore, this argument is not persuasive.
We agree with the examiner that software related inventions are “profoundly
distinguished” from other areas of technology because of the abstract nature of the
inventions and the lack of published prior art in this area. Furthermore, we agree with the
examiner that an examiner in this area “bears a difficult and substantial burden” in
examining software related patent applications, but that difficulty does not change the
review standard for obviousness. The same objective standard is applied to each claimed
invention, taken as a whole, no matter what the technology the invention is based upon.
In determining whether a claim would have been obvious at the time of the invention,
the Examiner must first determine the scope and content of the prior art. Graham v. John
Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). "Although
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