Ex Parte Dege et al - Page 8



            Appeal 2007-0229                                                                                 
            Application 10/968,436                                                                           
            Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004)).  The                    
            properly interpreted claim must then be compared with the prior art.                             
                         To establish inherency, the extrinsic evidence must make                            
                         clear that the missing descriptive matter is necessarily                            
                         present in the thing described in the reference, and that it                        
                         would be so recognized by persons of ordinary skill.                                
                         Inherency, however, may not be established                                          
                         by probabilities or possibilities. The mere fact that a                             
                         certain thing may result from a given set of                                        
                         circumstances is not sufficient.                                                    
            In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999)                     
            (citations omitted) (internal quotation marks omitted).                                          
                   “Section 103 forbids issuance of a patent when ‘the differences between the               
            subject matter sought to be patented 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 art to which said subject matter pertains.’”  KSR            
            Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1391 (2007).                   
            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, (3) the level of               
            skill in the art, and (4) where in evidence, so-called secondary considerations.                 
            Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).  See                      
            also KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391 (“While the sequence of these                     
            questions might be reordered in any particular case, the [Graham] factors continue               
            to define the inquiry that controls.”).                                                          


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