Appeal No. 2003-1199 Page 6
Application No. 09/125,329
disagree.
First, 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.
Second, the principle of law enunciated in Ex parte Hartop, 139 USPQ 525, 527
(Bd. App. 1962) has been substantially discredited in In re Cofer, 354 F.2d 664, 667-68,
148 USPQ 268, 270-71 (CCPA 1966).
Third, on this record, the examiner has not adequately explained how a person
having ordinary skill would have been led from "here to there," i.e., from the compound
disclosed by Meier '262 in Example 4, or by Meier '680 in Example 35, to crystal
modifications A and A' recited in applicants' claims. Having carefully reviewed each
Meier reference and the discussion of polymorphism in each Muenzel reference, we
disagree that the cited prior art would have led a person having ordinary skill to the
specific crystal modifications A and A' recited in the claims on appeal.
Accordingly, the examiner's rejection under 35 U.S.C. § 103(a) is reversed.
All of the appealed claims stand rejected under the judicially created doctrine of
obviousness-type double patenting over claims 1 through 10, 14, and 20 of Meier '680
in view of the combined disclosures of Muenzel (1966) and Muenzel (1970). On
reflection, we think it apparent that the rationale of this rejection parallels the rationale
supporting the examiner's obviousness rejection under 35 U.S.C. § 103(a).
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