Appeal No. 2007-1110 Page 8
Application No. 09/832,603
2. “ The problem is to interpret claims ‘in view of the specification’ without
unnecessarily importing limitations from the specification into the claims.” E-Pass
Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369, 67 USPQ2d 1947, 1950 (Fed.
Cir. 2003).
Obviousness
3. “Sectio n 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, and (3) thelevel
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 Courtin
Graham further noted that evidence of secondary considerations “might be util ized
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.
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