Appeal 2007-1722
Application 10/212,919
PRINCIPLES OF LAW
Under 35 U.S.C. § 103, a claimed invention is unpatentable if 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.” KSR Int’l v.
Teleflex Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1391 (2007); Graham v.
John Deere Co., 383 U.S. 1, 13-14, 148 USPQ 459, 466 (1966).
In Graham, the Court held that that the obviousness analysis is bottomed on
several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
determined; [(2)] differences between the prior art and the claims at issue are to be
ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
U.S. at 17, 148 USPQ at 467. See also KSR, 127 S.Ct. at 1734, 82 USPQ2d at
1391.
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations
of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the
same reason, if a technique has been used to improve one
device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the
same way, using the technique is obvious unless its
actual application is beyond his or her skill. Sakraida
and Anderson's-Black Rock are illustrative-a court must
ask whether the improvement is more than the
predictable use of prior art elements according to their
established functions.
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