Appeal No. 2005-1023 Page 7
Application No. 09/963,734
considered in judging the patentability of that claim against the prior art. In re Wilson,
424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). Furthermore, it is well
established that the materials on which a process is carried out must be accorded
weight in determining the obviousness of that process. See In re Pleuddemann, 910
F.2d 823, 825-28, 15 USPQ2d 1738, 1740-42 (Fed. Cir. 1990); In re Kuehl, 475 F.2d
658, 664-65, 177 USPQ 250, 255 (CCPA 1973); Ex parte Leonard, 187 USPQ 122, 124
(Bd. App. 1974). In our view, the case law clearly establishes that the position of the
examiner in this case is in error.
For the reasons set forth above, the decision of the examiner to reject
independent claims 1, 8 and 10, and claims 2 to 7 and 9 dependent thereon, under
35 U.S.C. § 103 is reversed.
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007