Interference 103,579
16 USPQ2d 1897, 1903 (Fed. Cir. 1990)(en banc), cert. denied,
500 U.S. 904 (1991):
Suffice it to say that we do not regard [In re] Durden[,
763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985),] as authority
to reject every method claim reading on an old type of
process, such as mixing, reacting, reducing, etc. The
materials used in a claimed process as well as the result
obtained therefrom must be considered along with the
specific nature of the process, and the fact that new or
old, obvious or nonobvious, materials are used or result
from the process are only factors to be considered,
rather than conclusive indicators of the obviousness or
nonobviousness of a claimed process. When any applicant
properly presents and argues suitable method claims, they
should be examined in light of all these relevant factors,
free from any presumed controlling effect of Durden.
Durden did not hold that all methods involving old process
steps are obvious; the court in that case . . . refused to
adopt an unvarying rule that the fact nonobvious starting
materials and nonobvious products are involved ipso facto
makes the process nonobvious. Such an invariant rule
always leading to the opposite conclusion is also not
the law.
After quoting from In re Dillon, supra, the court in In re
Ochiai, 71 F.3d 1565, 37 USPQ2d 1127 (Fed. Cir. 1995), stated
at , 37 USPQ2d at 1133 (emphasis added):
Having compared Ochiai’s claims, limited as they are to
the use of a particular nonobvious starting material for
making a particular nonobvious end product, to the prior
art of record, we reverse . . . .
Having considered all the evidence in this case pertinent
to interpretation of the parties’ claims, we find that the
similarities and dissimilarities of the functional terminology in
the claims of Hofvander’s and Visser’s involved applications are
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