Appeal 2007-0053
Application 10/225,829
PRINCIPLES OF LAW
To determine whether a prima facie case of obviousness has been
established, we are guided by the factors set forth in Graham v. John Deere Co.,
383 U.S. 1, 17, 148 USPQ 459, 467 (1966), viz., (1) the scope and content of the
prior art; (2) the differences between the prior art and the claims at issue; and (3)
the level of ordinary skill in the art.
In addition to our review of the Graham factors, we also consider whether a
person of ordinary skill in the art, possessed with the understandings and
knowledge reflected in the prior art, and motivated by the general problem facing
the inventor, would have been led to make the combination recited in the claims.
In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1337 (Fed. Cir. 2006). “In
considering motivation in the obviousness analysis, the problem examined is not
the specific problem solved by the invention but the general problem that
confronted the inventor before the invention was made. Kahn, 441 F.3d at 988, 78
USPQ2d at 1336 (citations omitted).
To establish a prima facie case of obviousness, the references being
combined do not need to explicitly suggest combining their teachings. See e.g.,
Kahn, 441 F.3d at 987-88, 78 USPQ2d at 1337-38 (“the teaching, motivation, or
suggestion may be implicit from the prior art as a whole, rather than expressly
stated in the references”). “The test for an implicit showing is what the combined
teachings, knowledge of one of ordinary skill in the art, and the nature of the
problem to be solved as a whole would have suggested to those of ordinary skill in
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: September 9, 2013