Appeal 2006-3362
Application 09/838,365
“To reject claims in an application under section 103, an examiner
must show an unrebutted prima facie case of obviousness. … On appeal to
the Board, an applicant can overcome a rejection by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness.” [citations removed]
In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1455 (Fed. Cir.
1998).
Both anticipation under 35 U.S.C. § 102 and obviousness under § 103
are two-step inquiries, in which the first step is a proper construction of the
claims and the second step requires a comparison of the properly construed
claim to the prior art. Medichem S.A. v. Rolabo S.L., 353 F.3d 928, 933, 69
USPQ2d 1283, 1286 (Fed. Cir. 2003).
Laws of nature, physical phenomena and abstract ideas are excluded
from patent protection. Diamond v. Diehr, 450 U.S. 175, 185, 209 USPQ 1,
7 (1981).
The test for statutory subject matter is whether the claimed subject
matter is directed to a “practical application,” i.e., whether it is applied to
produce “a useful, concrete and tangible result.” See State St. Bank & Trust
Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 1373, 47 USPQ2d 1596,
1601 (Fed. Cir. 1998).
ANALYSIS
Appellants contend that the Examiner erred in rejecting claims 1 to 18
under 35 U.S.C. § 103(a). Reviewing the Findings of Facts cited above and
the documents of record, we find that the Examiner has presented a prima
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