Appeal 2007-0717
Application 09/993,277
1 PRINCIPLES OF LAW
2 These claims are under rejection for obviousness. A claimed invention is
3 unpatentable if the differences between it and the prior art are “such that the
4 subject matter as a whole would have been obvious at the time the invention was
5 made to a person having ordinary skill in the art.” 35 U.S.C. § 103(a) (2000); In re
6 Kahn, 441 F.3d 977, 985 (Fed. Cir. 2006) (citing Graham v. John Deere Co., 383
7 U.S. 1, 13-14, (1966)). In Graham, the Court held that that the obviousness
8 analysis begins with several basic factual inquiries: “[(1)] the scope and content of
9 the prior art are to be determined; [(2)] differences between the prior art and the
10 claims at issue are to be ascertained; and [(3)] the level of ordinary skill in the
11 pertinent art resolved.” 383 U.S. at 17. After ascertaining these facts, the
12 obviousness of the invention is then determined “against th[e] background” of the
13 Graham factors. Id. at 17-18.
14 The Supreme Court has provided guidelines for determining obviousness based
15 on the Graham factors. KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d
16 1385 (2007). “[a] combination of familiar elements according to known methods
17 is likely to be obvious when it does no more than yield predictable results. 127
18 S. Ct. at 1731, 82 USPQ2d at 1395. “When a work is available in one field of
19 endeavor, design incentives and other market forces can prompt variations of it,
20 either in the same field or a different one. If a person of ordinary skill can
21 implement a predictable variation, §103 likely bars its patentability.” Id. For the
22 same reason, “if a technique has been used to improve one device, and a person of
23 ordinary skill in the art would recognize that it would improve similar devices in
24 the same way, using the technique is obvious unless its actual application is
25 beyond that person’s skill.” id. “Under the correct analysis, any need or problem
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