Appeal No. 2001-0036
Application 08/971,611
Bogner reference in ways not suggested by the reference
itself. For that reason, we will not sustain the examiner's
rejection of appealed claims 11 and 12 under 35 U.S.C. §
103(a) based on Bogner alone.
With regard to the examiner’s use of a per se rule such
as that derived from In re Japikse, 181 F.2d 1019, 86 USPQ 70
(CCPA 1950), we direct the examiner’s attention to In re
Ochiai, 71 F.3d 1565, 37 USPQ2d 1127 (Fed. Cir. 1995) and In
re Brouwer, 77 F.3d 422, 37 USPQ2d 1663 (Fed. Cir. 1996)
wherein the Court of Appeals for the Federal Circuit has held
that the claimed invention as a whole must be evaluated under
the standards set down in Graham v. John Deere Co., 383 U.S.
1, 148 USPQ 459 (1966), and its progeny, and that the use of
per se rules is improper in applying the test for obviousness
under 35 U.S.C. § 103 since such rules are inconsistent with
the fact-specific analysis of claims and prior art mandated by
section 103. Moreover, we also find that we are in agreement
with appellants’ treatment in the reply brief of the
examiner’s reliance on the Japikse case.
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