Appeal No. 1999-1153
Application 08/324,549
1991); In re O’Farrell, 853 F.2d 894, 902, 7 USPQ2d 1673, 1680
(Fed. Cir. 1988); In re Longi, 759 F.2d 887, 892-93, 225 USPQ
645, 648 (Fed. Cir. 1985).
The examiner argues that the majority in In re Ross, 305
F.2d 878, 881, 134 USPQ 320, 322 (CCPA 1962), agreed with the
examiner and the board that once the examiner cited prior art
showing a general reaction to be old, the burden was on the
appellants to present reason or authority for believing that a
particular group in the appellants’ compound would take part
in or affect the basic chlorination reaction disclosed in the
references. Since Ross, however, the court, as indicated by
Ochiai as set forth above and by In re Brouwer, 77 F.3d 422,
425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996), has held that
reliance upon per se rules of obviousness, such as that relied
upon by the majority in Ross, is improper, and that, instead,
an analysis based upon the particular facts of a case is
required.
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