Appeal No. 2006-2378 Page 7 Application No. 10/433,388 would not hold when changing the order of steps in a sequential multi-step organic synthesis. Moreover, the pending rejection applies a per se rule of obviousness without providing a fact-based explanation as to why one would reasonably expect to obtain the claimed compound if the order of steps in the prior art were reversed. The rejection therefore is contrary to the holding in In re Ochiai, 71 F.3d 1565, 37 USPQ2d 1127 (Fed. Cir. 1995). In Ochiai, the court emphatically rejected the use of per se rules when making obviousness rejections. 71 F.3d at 1572, 37 USPQ2d 1133 (“[R]eliance on per se rules of obviousness is legally incorrect and must cease.”). The court reasoned that “section 103 requires a fact-intensive comparison of the claimed process with the prior art rather than the mechanical application of one or another per se rule.” Id. at 1571, 37 USPQ2d at 1132. Stating that the court’s “precedents do not establish any per se rules of obviousness,” the court directed that claims should be examined “in light of all . . . relevant factors, free from any presumed controlling effect” of precedent. Id. at 1572, 37 USPQ2d at 1133, quoting In re Dillon, 919 F.2d 688, 695, 16 USPQ2d 1897, 1903 (Fed. Cir. 1990.) We agree that precedent should be considered when assessing whether claimed subject matter is obvious, in the manner discussed in MPEP § 2144. However, Ochiai makes it clear that the obviousness inquiry does not end with the examination of precedent. 71 F.3d, at 1572, 37 USPQ2d at 1133. Rather, a proper obviousness evaluation also requires “a fact-intensive” comparison between the claims and prior art. Id. at 1571, 37 USPQ2d at 1132.Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 NextLast modified: November 3, 2007