Ex Parte Lovett et al - Page 10

           Appeal 2007-1451                                                                         
           Application 09/970,146                                                                   

       1   if any of the structures or compositions within the scope of the claim is known in       
       2   the prior art." Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed.             
       3   Cir. 2001).   "The identical invention must be shown in as complete detail as is         
       4   contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9      
       5   USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required            
       6   by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is
       7   not required. In re Bond, 910 F.2d 831, 832, 15 USPQ2d 1566, 1567 (Fed. Cir.             
       8   1990).                                                                                   
       9       Obviousness                                                                          
      10   A claimed invention is unpatentable if the differences between it and the prior art      
      11   are “such that the subject matter as a whole would have been obvious at the time         
      12   the invention was made to a person having ordinary skill in the art.” 35 U.S.C. §        
      13   103(a) (2000); In re Kahn, 441 F.3d 977, 985, 78 USPQ2d 1329, 1334 (Fed. Cir.            
      14   2006) (citing Graham v. John Deere Co., 383 U.S. 1, 13-14, (1966)).  In Graham,          
      15   the Court held that that the obviousness analysis begins with several basic factual      
      16   inquiries: “[(1)] the scope and content of the prior art are to be determined; [(2)]     
      17   differences between the prior art and the claims at issue are to be ascertained; and     
      18   [(3)] the level of ordinary skill in the pertinent art resolved.” 383 U.S. at 17. After  
      19   ascertaining these facts, the obviousness of the invention is then determined            
      20   “against th[e] background” of the Graham factors. Id. at 17-18.                          
      21       The Supreme Court has provided guidelines for determining obviousness based          
      22   on the Graham factors. KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d            
      23   1385 (2007).  “A combination of familiar elements according to known methods is          
      24   likely to be obvious when it does no more than yield predictable results. Id at 1731,    
      25   82 USPQ2d at 1396. “When a work is available in one field of endeavor, design            

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