Appeal No. 1999-1153
Application 08/324,549
examiner’s argument that application of a known process to a
new starting material would have been obvious to one of
ordinary skill in the art (answer, pages 5 and 8) is based
upon a per se
rule. As stated by the court in In re Ochiai, 71 F.3d 1565,
1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995):
The use of per se rules, while undoubtedly less
laborious than a searching comparison of the claimed
invention - including all its limitations - with the
teachings of the prior art, flouts section 103 and
the fundamental case law applying it. Per se rules
that eliminate the need for fact-specific analysis
of claims and prior art may be administratively
convenient for PTO examiners and the Board. Indeed,
they have been sanctioned by the Board as well. But
reliance on per se rules of obviousness is legally
incorrect and must cease.
The examiner has not carried out the required fact specific
analysis. That is, the examiner has not explained why
evidence
relied upon by the examiner shows that one of ordinary skill
in the art would have been led to make acid amides by the
process recited in the appellant’s claims, and would have had
a reasonable expectation of success in doing so. See In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir.
7
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