Appeal 2007-1454
Application 11/088,528
1 mandatory and that what is relevant to an enablement determination depends upon
2 the facts of the particular case).
3 Furthermore, “[w]hether undue experimentation is needed is not a single,
4 simple factual determination, but rather is a conclusion reached by weighing many
5 factual considerations. Wands, 858 F.2d at 737, 8 USPQ2d at 1404.
6 The prior art may anticipate a claimed invention, and thereby render it
7 non-novel, either expressly or inherently. In re Cruciferous Sprout Litig., 301 F.3d
8 1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002), cert. denied, 538 U.S. 907
9 (2003). Express anticipation occurs when the prior art expressly discloses each
10 limitation (i.e., each element) of a claim. Id. In addition, “[i]t is well settled that a
11 prior art reference may anticipate when the claim limitations not expressly found in
12 that reference are nonetheless inherent in it.” Id.
13 35 U.S.C. § 103 forbids issuance of a patent when “the differences between
14 the subject matter sought to be patented and the prior art are such that the subject
15 matter as a whole would have been obvious at the time the invention was made to a
16 person having ordinary skill in the art to which said subject matter pertains.”
17 In Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), the Court
18 set out a framework for applying the statutory language of §103, language itself
19 based on the logic of the earlier decision in Hotchkiss v. Greenwood, 52 U.S. 248
20 (1851), and its progeny. See 383 U.S. at 15-17, 148 USPQ at 465-67. The
21 analysis is objective:
22 Under § 103, the scope and content of the prior art are to be determined;
23 differences between the prior art and the claims at issue are to be
24 ascertained; and the level of ordinary skill in the pertinent art resolved.
25 Against this background, the obviousness or nonobviousness of the subject
26 matter is determined. Such secondary considerations as commercial success,
27 long felt but unsolved needs, failure of others, etc., might be utilized to give
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