Appeal 2007-0205
Application 09/812,302
PRINCIPLES OF LAW
1. Anticipation
A rejection for anticipation requires that the four corners of a single
prior art document describe every element of the claimed invention, either
expressly or inherently, such that a person of ordinary skill in the art could
practice the invention without undue experimentation. See Atlas Powder
Co. v. IRECO, Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1946 (Fed. Cir.
1999); In re Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed.
Cir. 1994).
2. Obviousness
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of presenting a prima facie case of obviousness. See In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1,
17-18, 148 USPQ 459, 467 (1966). See also KSR Int’l v. Teleflex, Inc., 127
S.Ct. 1727, 1734, 82 USPQ2d 1385, 1391(2007) (“While the sequence of
these questions might be reordered in any particular case, the [Graham]
factors continue to define the inquiry that controls.”)
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161,
82 USPQ2d 1687, 1691 (Fed. Cir. 2007) (quoting KSR, 127 S. Ct. at 1739-
40, 82 USPQ2d at 1395). “One of the ways in which a patent's subject
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