Appeal No. 1998-2107
Application No. 08/137,624
Second, we are unable to identify the portion of In re Ochiai, 71 F.3d 1565,
37 USPQ2d 1127 (Fed. Cir. 1995) that according to the examiner (Answer, page 9)
“merely says: do not cite case law to me, argue the chemistry.” In addition, we find
no legal precedent to support the examiner’s per se conclusion on this record that
“[t]he claimed process is entirely analogous to and [is] therefore obvious over [a
prior art] process….” Instead, our appellate reviewing court has made it clear that
there are no per se rules of obviousness or nonobviousness. In re Ochiai, 71 F.3d
at 1572, 37 USPQ2d at 1133 (Fed. Cir. 1995)(“reliance on per se rules of
obviousness is legally incorrect.”) Accord In re Brouwer, 77 F.3d 422, 425, 37
USPQ2d 1663, 1666 (Fed. Cir. 1996).
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”).
In evaluating the facts it is well-established that the initial burden of
presenting a prima facie case of obviousness under 35 U.S.C. § 103 rests on the
examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). In meeting this burden, it is also well-established that before a conclusion of
obviousness may be made, there must be more than the demonstrated existence of
all of the components of the claimed subject matter.
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