"In re Rose" not allowed to become per se rule

from within Ex parte WARBURTON

On naked assertions:

Although Appellant points out what claims 3, 4 and 6 recite and assert that the references do not teach those limitations (id. at 12-13), such conclusions are not considered a separate argument for patentability. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). Dependent claims 3, 4 and 6 therefore stand or fall with claim 1. 37 C.F.R. §41.37(c)(1)(vii).

Concerning burden switching [as in In re Best]:

“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.” Id.

[W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.
Id. at 1478, quoting In re Swinehart, 439 F.2d 210, 212 (CCPA 1971).

KSR is invoked:

A reference is analogous if it is reasonably pertinent to the particular problem with which the inventor is involved. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
Obviousness analysis permits an examiner to rely upon “common sense” or the knowledge of the skilled artisan to bridge gaps in prior art’s explicit teachings. KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 420-21, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007) (“Common sense teaches ... that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”). The examiner’s reasoning “may include recourse to logic, judgment, and common sense available to a person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir. 2009).

On obviousness:

One “may rebut a prima facie case of obviousness by showing that the
prior art teaches away from the claimed invention in any material respect.” In re Peterson, 315 F.3d 1325, 1331 (Fed. Cir. 2003); citing In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997). However, for a reference to teach away, it must state more than a general preference for an alternative invention. It must ‘“criticize, discredit, or otherwise discourage”’ investigation into the invention claimed. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009), quoting In re Fulton, 391 F.3d 1195, 1201 (Fed.Cir. 2004).

...size of an article under consideration which is not a matter of invention,” citing In re Rose, 220 F.2d 459 (CCPA 1955).

BUT

The Examiner’s reliance on In re Rose does not explain why a skilled
artisan would have modified Dyer to arrive at the claimed dimensions as a matter of obvious design choice. Although we appreciate the Examiner's reliance on In re Rose for the proposition that size is not ordinarily a patentable feature, we note that jurisprudence when used in this manner amounts to a per se rule of unpatentability. However, our reviewing court has carefully cautioned against the use of such per se rules. In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (“[R]eliance on per se rules of obviousness is legally incorrect.”). As such, we find the Examiner’s reliance on a per se rule to be inappropriate because the Examiner has not provided any evidence or reason that would have prompted a person of ordinary skill in the art to modify the cable ties of Dyer to the dimensions recited in the claim.

[Query: isn't obvious design choice "obvious"?]

AND

The fact that none of the references individually disclose placing cables ties into a sterile package is not sufficient to establish that the Examiner erred in reaching a conclusion of obviousness based upon the combined teachings of the references. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (Each reference “must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.”).