Appeal No. 2005-2694
Application No. 10/208,631
Moreover, the examiner’s criticism of the claim limitations at
issue as not being critical is of no moment. Claims are not
legally required to include “critical” limitations. See W.L. Gore
& Assocs. v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Finally, the contention that uncritical limitations pertaining
to differences in size or other variables in a claim cannot form
the basis for patentability also is unsound. To begin with, the
inference of such a general or per se rule of obviousness from
cases turning on specific facts has no basis in law. Furthermore,
the application of such a per se rule to reject a claim constitutes
additional legal error because it bypasses the particularized
fact-specific inquiry required by § 103(a). See In re Ochiai, 71
F.3d 1565, 1571, 37 USPQ2d 1127, 1132-33 (Fed. Cir. 1995); In re
Wright, 343 F.2d 761, 769-770, 145 USPQ 182, 190 (CCPA 1965).
For these reasons, the combined teachings of Albright and
Grabhorn fail to establish a prima facie case of obviousness with
respect to the subject matter recited in independent claims 1, 113
and 114.1 Accordingly, we shall not sustain the standing 35 U.S.C.
1 Consequently, it is unnecessary to delve into the merits of the appellant’s declaration evidence
of non-obviousness.
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