Appeal 2007-0924
Application 10/401,079
medicinal agents used in emergency treatments (Yannuzzi, col. 1, ll. 62-64).
According to the Examiner, in view of the combined teachings of Wolfe and
Yannuzzi, one of ordinary skill in the art would provide different internal
compartments within Wolfe to store other articles (Ans. 6).
The issue presented to us is whether it would have been obvious to
one of ordinary skill in the art to provide a separate compartment within
Wolfe's cover member 22b for storing other objects, such as emergency
pills. Appellant argues that one of ordinary skill in the art would not
understand Wolfe to teach a container for storing objects and would not find
motivation to modify Wolfe in the manner relied upon by the Examiner
(App. Br. 15). Appellant also argues that, if such compartments were
incorporated into Wolfe, the spindle5 and label would not fit within the
cover, thereby rendering Wolfe unsatisfactory for its intended purpose (App.
Br. 16).
"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). The question of obviousness 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, (3) the level of ordinary skill in the art, and
(4) where in evidence, so-called secondary considerations. Graham v. John
5 The embodiment of Figures 10 and 11 of Wolfe does not include a
"spindle."
11
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