Appeal No. 2002-2283
Application No. 08/882,513
[T]he examiner incorrectly drew from Durden, a case
turning on specific facts, a general obviousness rule:
namely, that a process claim is obvious if the prior
art references disclose the same general process of
using “similar” starting materials. No such per se
rule exists. Mere citation of Durden . . . or an other
case as a basis for rejecting process claims that differ
from the prior art by their use of different starting
materials is improper, as it sidesteps the fact-
intensive inquiry mandated by section 103.
. . . This method of analysis is founded on legal
error because it substitutes supposed per se rules for
the particularized inquiry required by section 103. It
necessarily produces erroneous results.
Even if the examiner had not been aware of the Federal Circuit’s
post-Durden jurisprudence, applicants’ citation and discussion of
Ochiai (Application Paper No. 15, p. 4, and AB 7-9) should have
alerted the examiner that the legal basis for the rejection was
suspect.
B. Nor does appellants’ brief set the standard. We are not
even in the batter’s box before appellants deliver a bad pitch
(Paper No. 28, pp. 2-3):
Applicants respectfully submit that the Amendment
After Final should be entered and considered in this
appeal . . . .
Entry of this amendment is respectfully solicited
as it does not raise new issues for consideration by
the Examiner or in the alternative places [sic] the
claim in better form for appeal.
. . . . .
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