Ex Parte Czech et al - Page 7



            Appeal 2007-1552                                                                                
            Application 09/852,123                                                                          
            reference, and that it would be so recognized by persons of ordinary skill.                     
            Inherency, however, may not be established by probabilities or possibilities.  The              
            mere fact that a certain thing may result from a given set of circumstances is not              
            sufficient.”  In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed.                 
            Cir. 1999) (citations omitted) (internal quotation marks omitted).                              
                   “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, and (3) the level             
            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 Court in                  
            Graham further noted that evidence of secondary considerations “might be utilized               
            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.                                       
                   In KSR, the Supreme Court emphasized “the need for caution in granting a                 
            patent based on the combination of elements found in the prior art,” id. at 1739, 82            
            USPQ2d at 1395, and discussed circumstances in which a patent might be                          

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