Appeal 2007-0125
Application 10/447,227
4) Claims 16 through 19 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Aichinger (as explained by
Ueoka) and Mitsumoto.
IV. PRINCIPLES OF LAW
Under35 U.S.C. § 102(b), “every element of the claimed invention
must be identically shown in a single reference….” In re Bond, 910 F.2d
831, 832, 15 USPQ2d 1566, 1567 (Fed. Cir. 1990). However, “extrinsic
evidence may be considered when it is used to explain, but not to expand,
the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d 388,
390, 21 USPQ2d 1281, 1284 (Fed. Cir. 1991).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary consideration (e.g., the
problem solved). Graham v. John Deere Co. of Kansas City, 383 U.S. 1,
17-18, 148 USPQ2d 459, 467 (1966). “[A]nalysis [of whether the subject
matter of a claim is obvious] need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l Co. Teleflex, Inc., 127 S. Ct. 1727, 1741,
82 USPQ2d 1385, 1396 (2007) quoting In re Kahn, 441 F.3d 977, 988, 78
USPQ2d 1329, 1336 (Fed. Cir. 2006); see also DyStar Textilfarben GmBH
& Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361, 80
USPQ2d 1641, 1645 (Fed. Cir. 2006)(“The motivation need not be found in
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