Board cites In re Best in Ex parte Field
See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.... Whether the rejection is based on „inherency‟ under 35 U.S.C. § 102, on „prima facie obviousness‟ under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO‟s inability to manufacture products or to obtain and compare prior art products.) While we recognize that Foushee teaches that the loop does not displace the impediment 42 (FF 3), this impediment is not a tissue mass. Appellants provide no evidence that Foushee‟s wire loop would not satisfy the functional requirements to displace a tissue mass without puncturing the tissue mass.
As to obviousness, the Board noted:
As our reviewing court has explained, therefore, to support a conclusion of obviousness, “[w]hether the Board relies on an express or an implicit showing, it must provide particular findings related thereto. Broad conclusory statements standing alone are not „evidence.”‟ In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000) (citation omitted). Thus, “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.” In re Ochiai, 71 F.3d 1565, 1571 (Fed. Cir. 1995); see also id. at 1572 (“[R]eliance on per se rules of obviousness is legally incorrect and must cease.”)
The Examiner‟s position is that Howard v. Detroit Stove Works, 150 U.S. 164 (1893) holds that forming a one piece article from two pieces is a matter of routine skill. The Examiner, however, appears to draw from this case turning on specific facts, a general obviousness rule: namely, that forming several pieces integrally as a single-piece is not considered to be patentable subject matter. No such per se rule exists.
As discussed above, the Examiner must provide evidence or scientific reasoning as to why the ordinary artisan would have modified the mesh localization device of Buehlmann so that the mesh and actuator wire are formed of a single piece. Because the Examiner fails to provide any evidence or reasoning in this regard, we are compelled to reverse the rejection.