Ex Parte Karwowski et al - Page 8

                Appeal 2007-0726                                                                                
                Application 10/264,561                                                                          
                                             V.  PRINCIPLES OF LAW                                              
                       “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)(quoting 35 U.S.C. § 103(a)).                                  
                The analysis is objective and 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, and (3) the                   
                level of skill in the art.  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.”)  The Court in Graham further noted that evidence of secondary                       
                considerations, such as commercial success, long felt but unsolved needs,                       
                failure of others, etc., “might be utilized to give light to the circumstances                  
                surrounding the origin of the subject matter sought to be patented.”                            
                383 U.S. at 18, 148 USPQ at 467.                                                                
                       In KSR, the Supreme Court emphasized that “the principles laid down                      
                in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11 How. 248.”                      
                KSR, 127 S. Ct. at 1739, 82 USPQ2d at 1395 (citing Graham v. John Deere                         
                Co., 383 U.S. 1, 12, 148 USPQ 459, 464 (1966) (emphasis added)), and                            
                reaffirmed principles based on its precedent that “[t]he combination of                         
                familiar elements according to known methods is likely to be obvious when                       
                it does no more than yield predictable results.”  Id.  The Court explained:                     

                                                       8                                                        

Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next

Last modified: September 9, 2013