Appeal 2007-1557
Application 10/943,536
a whole and the relative persuasiveness of the arguments. See Oetiker, 977 F.2d at
1445, 24 USPQ2d at 1444; Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
It is incumbent upon the examiner to establish a factual basis to support the
legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988, 78 USPQ2d
1329, 1336 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”) (cited with approval in KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct.
1727, 1741, 82 USPQ2d 1385, 1396 (2007)). In so doing, the examiner is
expected to make the factual determinations set forth in Graham v. John Deere
Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). 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 necessary determinations include: (1) the scope and content of the
prior art; (2) the differences between the prior art and the claims at issue; and (3)
the level of ordinary skill in the art. Id. “Against this background the obviousness
or nonobviousness of the subject matter is determined. Such secondary
considerations as commercial success, long felt but unsolved needs, failure of
others, etc., might be utilized to give light to the circumstances surrounding the
origin of the subject matter sought to be patented.” Id. (quoting Graham v. John
Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966)) (internal quotations
omitted).
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