Appeal No. 2003-0693
Application No. 09/006,248
The examiner’s theory of obviousness based on omitting a part
and its function to justify the proposed elimination of those
portions of Blatt ‘276 to the right of the first two arms (as
viewed in Figure 1) also is not well taken. While there is support
in the case law for the rule that omitting an element and its
function is an obvious expedient if the remaining elements perform
the same function as before (In re Karlson, 311 F.2d 581, 584, 136
USPQ 184, 186 (CCPA 1963)), this is not a mechanical rule and the
language in Karlson was not intended to short circuit the
determination of obviousness mandated by 35 U.S.C. § 103. See In
re Wright, 343 F.2d 761, 769-70, 145 USPQ 182, 190 (CCPA 1965).
Our current court of review has made clear 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 section 103.
See In re Ochiai, 71 F.3d 1565, 1570, 37 USPQ2d 1127, 1132 (Fed.
Cir. 1995). In the present case, the examiner has not advanced any
factual basis to justify his conclusion that it would have been
obvious to discard the large portion of the apparatus of Blatt ‘276
to the right of the first two arms (as viewed in Figure 1) in order
to arrive at the combination set forth in appellants’ claim 1.
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