Appeal No. 1999-1393
Application No. 08/242,344
O’Farrell, 853 F.2d 902, 7 USPQ2d 1673, 1680 (Fed. Cir. 1988), in considering the
Polisky reference relative to the rejected claims stated “Polisky contained detailed
enabling methodology for practicing the claimed invention, a suggestion to modify
the prior art to practice the claimed invention, and evidence suggesting that it would
be successful.” (Emphasis added). See also, In re Lalu, 747 F.2d 703, 705, 223
USPQ 1257, 1258 (Fed. Cir. 1984)(“[t]he prior art must provide one of ordinary skill
in the art the motivation to make the proposed molecular modifications needed to
arrive at the claimed compounds.”)
Since there are no per se rules of obviousness or nonobviousness, each
case must be decided upon the facts in evidence in that case. See In re Cofer, 354
F.2d 664, 667, 148 USPQ 268, 271 (CCPA 1966)(“[n]ecessarily it is facts
appearing in the record, rather than prior decisions in and of themselves, which
must support the legal conclusion of obviousness under 35 U.S.C. § 103”); and Ex
parte Goldgaber, 41 USPQ2d 1172, 1176 (Bd. Pat. App. & Int. 1995)(“each case
under 35 U.S.C. § 103 is decided on its own particular facts.”)
There are no per se rules of obviousness. In re Ochiai, 71 F.3d 1565, 1572,
37 USPQ2d 1127, 1133 (Fed. Cir. 1995).
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