Appeal No. 1998-2297
Application 08/353,622
has elapsed.” The court stated that “it is well settled that
it is not ‘invention’ to broadly provide a mechanical or
automatic means to replace manual activity which has
accomplished the same result.” Venner, 262 F.2d at 95, 120
USPQ at 194. In Venner, however, all limitations in the
claims, including the automatic means, were disclosed in the
applied references. See Venner, 262 F.2d at 96, 120 USPQ at
195.
In the present case, unlike in Venner, the examiner has
not provided a reference which discloses a high speed rotary
power tool, let alone one which is used for cleaning glass.
The examiner has merely relied upon a per se rule that
providing a mechanical or automatic means to replace manual
activity which has accomplished the same result is
unpatentable. As stated by the Federal Circuit in In re
Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir.
1995), “reliance on per se rules of obviousness is legally
incorrect and must cease.” Moreover, as correctly pointed out
by the appellant (brief, pages 4-5), the examiner has not
established that manual rubbing accomplishes the same result
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