Appeal 2007-0370
Application 09/951,560
1 CONCURRING OPINION
2
3 JAMES T. MOORE, Administrative Patent Judge.
4
5 I completely agree with the decision of the panel in this instance. I
6 write this concurrence only to emphasize certain issues.
7 The question of obviousness is resolved on the basis of underlying
8 factual determinations including (1) the scope and content of the prior art,
9 (2) any differences between the claimed subject matter and the prior art, (3)
10 the level of skill in the art, and (4) where in evidence, so-called secondary
11 considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ
12 459, 467 (1966). See also KSR, 127 S. Ct. 1727, 1734, 82 USPQ2d 1385,
13 1391 (“While the sequence of these questions might be reordered in any
14 particular case, the [Graham] factors continue to define the inquiry that
15 controls.”)
16 In KSR, the Supreme Court emphasized “the need for caution in
17 granting a patent based on the combination of elements found in the prior
18 art,” id. at 1739, 82 USPQ2d at 1395, and discussed circumstances in which
19 a patent might be determined to be obvious.
20 In particular, the Supreme Court emphasized that “the principles laid
21 down in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11 How.
22 248.” KSR, 127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing Graham v. John
23 Deere Co., 383 U.S. 1, 12 (1966) (emphasis added)), and reaffirmed
24 principles based on its precedent that “[t]he combination of familiar
25 elements according to known methods is likely to be obvious when it does
26 no more than yield predictable results.” Id. The Court explained:
22
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