Ex Parte Rechelbacher - Page 6

                Appeal 2007-0122                                                                                 
                Application 10/358,626                                                                           
                comfort over the prior art resilient grips and contoured grips (id.).  McCall                    
                further discloses that the grip may be applied to any of a wide range of                         
                writing implements as well as other manual implements with working tips,                         
                for example, paint brushes, jeweler’s tools, and other devices (McCall, col.                     
                4, ll. 5-12).                                                                                    
                       C.  Principles of Law                                                                     
                       A claimed invention is unpatentable if the differences between it and                     
                the prior art are such that the subject matter as a whole would have been                        
                obvious at the time the invention was made to a person having ordinary skill                     
                in the pertinent art.  35 U.S.C. § 103(a) (2000).  Factors to consider in                        
                determining obviousness include “‘the scope and content of the prior art,’”                      
                the “‘differences between the prior art and the claims at issue,’” and “‘the                     
                level of ordinary skill in the pertinent art.’”  Dann v. Johnston, 425 U.S. 219,                 
                226 (1976) (quoting Graham v. John Deere Co., 383 U.S. 1, 17 (1966)).                            
                       To support a prima facie case of obviousness, an examiner must show,                      
                by a preponderance of the evidence, that a person of ordinary skill in the art,                  
                possessed with the understanding 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, 1337-38 (Fed. Cir. 2006).                                                   
                       In making the determination of obviousness, evidence related to                           
                secondary indicia of non-obviousness like “commercial success, long felt                         
                but unresolved needs, failure of others, etc.” is also relevant.  Graham, 383                    
                U.S. at 17-18.                                                                                   
                       “[T]o reject claims in an application under section 103, an examiner                      
                must show an unrebutted prima facie case of obviousness.  On appeal to the                       

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