Appeal No. 1997-2373
Application No. 08/333,880
an invention involves only routine skill in the art.” Examiner’s Answer, page 5.
She has also cited In re Venner, 262 F.2d 91, 120 USPQ 192 (CCPA 1958), for
the supposed rule that it is obvious to automate a formerly manual process.
Examiner’s Answer, page 11. We take this opportunity to point out that there are
no per se rules of unpatentability. See In re Ochiai, 71 F.3d 1565, 1572,
37 USPQ2d 1127, 1133 (Fed. Cir. 1995) (“The use of per se rules, while
undoubtedly less laborious than a searching comparison of the claimed
invention—including all its limitations—with the teachings of the prior art, flouts
section 103 and the fundamental case law applying it.”); In re Cofer, 354 F.2d
664, 667, 148 USPQ 268, 271 (CCPA 1966) (“[I]t 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.”). Each claimed invention
must be considered on its own merits and in every instance, the test for
patentability under § 103 is the same: “whether the teachings of the prior art,
taken as a whole, would have made obvious the claimed invention.” In re
Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991).
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