Appeal 2006-2308
Application 10/343,154
determining obviousness under 35 U.S.C. § 103.4 (In re Ochiai, 71 F.3d
sense, in particular, as to how the material is molded in the cavities and then
subsequently released from those cavities for use. We note that the
importance of the claimed shape in facilitating removal of the formed
adhesive closing part from the mold is clearly described in the Examiner has
failed to explain why one of ordinary skill in the art would have been
motivated to use a symmetrical hyperboloid-shape in Hammer’s method
given Thomas’ limited disclosure of asymmetrical shapes. See Thomas, col.
4 As stated in Ochiai, 71 F.3d at 1572, 37 USPQ2d at 1133:
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. Any such administrative convenience
is simply inconsistent with section 103, which, according to
Graham [v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966)]
and its progeny, entitles an applicant to issuance of an
otherwise proper patent unless the PTO established that the
invention as claimed in the application is obvious over cited
prior art, based on the specific comparison of that prior art with
claim limitations.
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