Appeal No. 2002-1438 Page 5
Application No. 09/345,966
Discussion
According to the examiner, Doll discloses a process for preparing a compound
having formula (1.1).1 The examiner argues that Doll's process bears close relationship
to the instantly claimed process, but differs in two respects.
First, according to the examiner, "[t]he process of Doll [preparative example 8 at
pages 33 and 34] involves the reduction before the resolution of the racemate whereas
the instant process comprises the separation of the optical isomers before the reduction
step" (Paper No. 10, page 3, paragraph 5). In an effort to bridge this difference, the
examiner appears to invoke a per se rule of obviousness. The examiner simply states
that "[t]o one of ordinary skill in the art, the order of these steps are optional choices
[sic] and is therefore prima facie obvious in the absence of unexpected results" (Paper
No. 10, page 3, paragraph 5; and paragraph bridging pages 4 and 5).
We caution, however, that reliance on per se rules of obviousness is legally
incorrect. As stated 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.
We also note In re Cofer, 354 F.2d 664, 667, 148 USPQ 268, 271 (CCPA 1966), stating
1 This is applicants' terminology, i.e., compound (1.1) is the first listed
compound in claims 2 and 12.
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