Appeal 2007-0463
Application 09/896,537
PRINCIPLES OF LAW REGARDING OBVIOUSNESS
A rejection under 35 U.S.C. § 103(a) must be based on the following factual
determinations: (1) the scope and content of the prior art; (2) the level of ordinary
skill in the art; (3) the differences between the claimed invention and the prior art;
and (4) objective indicia of non-obviousness. DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360, 80 USPQ2d 1641,
1645 (Fed. Cir. 2006) (citing Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966)).
“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 Int’l v. Teleflex, Inc., 127 S. Ct. 1727, 1739-40,
82 USPQ2d 1385, 1395 (2007)). “One of the ways in which a patent's subject
matter can be proved obvious is by noting that there existed at the time of
invention a known problem for which there was an obvious solution encompassed
by the patent's claims.” KSR, 127 S. Ct. at 1742, 82 USPQ2d at 1397.
Discussing the obviousness of claimed combinations of elements of prior art,
KSR explains:
When a work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in the same
field or a different one. If a person of ordinary skill can implement a
predictable variation, §103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is
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