Appeal 2007-0693
Application 10/188,519
1 The factual inquiry into whether claimed subject matter would have
2 been obvious includes a determination of: (1) the scope and content of the
3 prior art; (2) the differences between the claimed subject matter and the prior
4 art; (3) the level of ordinary skill in the art; and (4) secondary considerations
5 (e.g., the problem solved) that may be indicia of (non)obviousness. Graham
6 v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). Recently, the
7 Supreme Court of the United States stated that the “analysis [of whether the
8 subject matter of a claim would have been obvious] need not seek out
9 precise teachings directed to the specific subject matter of the challenged
10 claim, for a court can take account of the inferences and creative steps that a
11 person of ordinary skill in the art would employ.” KSR Int’l v.. Teleflex,
12 Inc., 127 S. Ct. 1727, ___, 82 USPQ2d 1385, 1396 (2007); see also DyStar
13 Textilfarben GmBH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
14 1356, 1361, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006)(“The motivation need
15 not be found in the references sought to be combined, but may be found in
16 any number of sources, including common knowledge, the prior art as a
17 whole, or the nature of the problem itself.”); In re Boesch, 617 F.2d 272,
18 276, 205 USPQ 215, 219 (CCPA 1980)(“[D]iscovery of an optimum value
19 of a result effective variable in a known process is ordinarily within the skill
20 of the art.”); In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA
21 1969)(“Having established that this knowledge was in the art, the examiner
22 could then properly rely, as put forth by the solicitor, on a conclusion of
23 obviousness ‘from common knowledge and common sense of the person of
24 ordinary skill in the art without any specific hint or suggestion in a particular
25 reference.’”); In re Hoeschele, 406 F.2d 1403, 1406-07, 160 USPQ 809,
11
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: September 9, 2013