Appeal No. 2001-1805 Page 3
Application No. 09/141,402
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.”).
We find the examiner’s argument (Answer, page 4), “[t]he Court [in] In re
Cofer expands upon rather than rejects what the Appellants term a ‘purported
[per se] rule’” legally flawed and in error. As set forth supra, our appellate
reviewing court has made it clear that there are no per se rules of obviousness.
As a second error, we find that the examiner failed to provide any
rationale or analysis to support her position in either the Answer or the Final
Rejection. For emphasis we reproduce in full the examiner’s statement of the
rejection from page 3 of the Answer -- “Claim 41 is rejected under 35 U.S.C. [§]
103(a) as being unpatentable over … Murugesan.” In this regard, we suggest
the examiner review the Manual of Patent Examining Practice (MPEP)
§ 706.02(j) for a model of how to explain a rejection under this section of the
statute. Furthermore, we direct the examiner’s attention to MPEP § 1208, “[a]n
examiner’s answer should not refer, either directly or indirectly, to more than one
prior Office action.” In this instance the Answer neither provides a reasoned
explanation of the rejection, nor does it direct our attention to any prior Office
action where a reasoned analysis of the facts is provided.
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