2116

2116 Material Manipulated in Process

2116.01 Novel, Unobvious Starting Material or End Product [R-6]

DURDEN

It is not clear on the record before us if the Examiner is attempting to assert some type of reasoning along the lines discussed in In re Durden, 763 F.2d 1406 (Fed. Cir. 1985) (patentability of a method does not necessarily depend on the starting materials employed in that method) (discussed at MPEP § 2116.01). If this is the Examiner’s intended point, it is not clearly articulated on the record presently before us.

OCHIAI

As has often been pointed out, there are no per se rules in the law of obviousness. In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (“reliance on per se rules of obviousness is legally incorrect and must cease.”)

The Examiner's reliance on a per se rule of obviousness does not provide the necessary analysis. see In re Ochiai, 71 F.3d 1565, 1571 (Fed. Cir. 1995) ("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."), TorPharm, Inc. v. Ranbaxy Pharms., Inc., 336 F.3d 1322, 1327 (Fed. Cir. 2003) (citing Ochiai)

A proper obviousness analysis requires "a searching comparison of the claimed invention-including all its limitations-with the teaching of the prior art." In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).

PLEUDDEMANN

The portion of the Appellant’s Specification which describes the Appellant’s claimed subject matter is not prior art against that subject matter. In re Pleuddemann, 910 F.2d 823 (Fed. Cir. 1990).