Appeal No. 2001-1805 Page 2
Application No. 09/141,402
GROUND OF REJECTION
Claim 41 stands rejected under 35 U.S.C. § 103 as obvious over
Murugesan.
DISCUSSION
At the outset, we wish to make it clear that “reliance on per se rules of
obviousness is legally incorrect” and must stop. In re Ochiai, 71 F.3d 1565,
1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995). Accord, In re Brouwer, 77 F.3d
422, 425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996).
A per se approach would be in conflict with long standing precedent as to
the relevance of the method of making a product to the obviousness of the
product. Note In re Payne, (“[a]n invention is not ‘possessed’ absent some
known or obvious way to make it.”) citing In re Hoeksema, 399 F.2d 269, 274,
158 USPQ 596, 601 (CCPA 1968). In a similar manner, the court in In re
O’Farrell, 853 F.2d 902, 7 USPQ2d 1673, 1680 (Fed. Cir. 1988), in considering
the Polisky reference relative to the rejected claims stated “Polisky contained
detailed enabling methodology for practicing the claimed invention, a suggestion
to modify the prior art to practice the claimed invention, and evidence suggesting
that it would be successful.” (Emphasis added). See also, In re Lalu, 747 F.2d
703, 705, 223 USPQ 1257, 1258 (Fed. Cir. 1984)(“[t]he prior art must provide
one of ordinary skill in the art the motivation to make the proposed molecular
modifications needed to arrive at the claimed compounds.”)
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,
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007