Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 10


                  Appeal No.  1999-2200                                                                                         
                  Application No.  08/896,063                                                                                   
                  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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