Appeal No. 2001-0713
Application 09/016,304
examiner’s taking of “Official Notice” during the prosecution of
this application and that the examiner has failed to provide a
teaching in support of the official notice [reply brief, pages
5-10].
We will not sustain the rejection of claim 1 for the
reasons argued by appellant in the briefs. The examiner’s
reliance on Ogawa is erroneous for reasons discussed above.
Additionally, the examiner has improperly relied on a per se rule
of obviousness and has improperly taken official notice of the
facts. The examiner should avoid using any per se rules of
obviousness. Obviousness must be determined on a case by case
basis. The examiner must always consider the specific
recitations of the claimed invention and the specific teachings
of the applied prior art. The Federal Circuit has also
determined that an examiner’s reliance on “findings” of official
notice or design choice do not establish a prima facie case of
obviousness when properly challenged.
With respect to the rejection of dependent claims 2 and 4
based on Ogawa and Clawson, since Clawson does not overcome the
deficiencies of Ogawa discussed above, we do not sustain the
rejection of claims 2 and 4.
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