Appeal 2007-1308
Application 10/097,398
1 level of ordinary skill in the pertinent art resolved.” 383 U.S. at 17. After
2 ascertaining these facts, the obviousness of the invention is then determined
3 “against th[e] background” of the Graham factors. Id. at 17-18.
4 The Supreme Court has provided guidance for determining obviousness based
5 on the Graham factors. KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d
6 1385 (2007). “The combination of familiar elements according to known methods
7 is likely to be obvious when it does no more than yield predictable results.” Id. 127
8 S.Ct. at 1739, 82 USPQ2d at 1395. “In determining whether the subject matter of
9 a patent claim is obvious, neither the particular motivation nor the avowed purpose
10 of the patentee controls. What matters is the objective reach of the claim. If the
11 claim extends to what is obvious, it is invalid under § 103.” Id. 127 S.Ct. at 1741-
12 42, 82 USPQ2d at 1397. “One of the ways in which a patent’s subject matter can
13 be proved obvious is by noting that there existed at the time of invention a known
14 problem for which there was an obvious solution encompassed by the patent’s
15 claims.” Id. 127 S.Ct. at 1742, 82 USPQ2d at 1397.
16
17 ANALYSIS
18 Claims 1-12 rejected under 35 U.S.C. § 103(a) as obvious over Eldering and
19 Zaltman.
20 We note that the Appellants argue these claims as a group. Accordingly, we
21 select claim 1 as representative of the group.
22 As to the Appellants’ contention in (FF03), nothing in claim 1 recites
23 evaluating a test product compared to reference products under simulated market
24 conditions. Claim 1 simply exposes consumers to a test product and reference
25 products and separately uses a marketing simulation to analyze product probability
8
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