Appeal No. 2002-0035
Application No. 08/861,918
In the present case, the examiner has failed to advance any
factual basis to support the conclusion that it would have been
obvious to one of ordinary skill in the art to modify the carrier
film 18 of Porter in the manner proposed. The mere fact that the
prior art could be so modified would not have made the
modification obvious unless the prior art suggested the
desirability of the modification (see In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984)). Porter contains no
such suggestion.
Concerning the examiner’s citation of Howard v. Detroit
Stove Works in support of the rejection, we note that the
examiner incorrectly drew from this case turning on specific
facts, a general obviousness rule: namely, that forming several
pieces integrally as a single-piece is not considered to be
patentable subject matter. No such per se rule exists.2 The
examiner’s citation of case law as a basis for rejecting claims
2We direct the examiner’s attention to In re Ochiai, 71 F.3d
1565, 1570, 37 USPQ2d 1127, 1132 (Fed. Cir. 1995) and In re
Brouwer, 77 F.3d 422, 425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996)
wherein the Federal Circuit has held that the claimed invention
as a whole must be evaluated under the standards set down in
Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 466
(1966), and its progeny, and that the use of per se rules is
improper in applying the test for obviousness under 35 U.S.C.
§ 103 since such rules are inconsistent with the fact-specific
analysis of claims and prior art mandated by § 103.
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