Appeal 2007-2421
Application 10/289,793
PRINCIPLES OF LAW
Anticipation under 35 U.S.C. § 102 is a question of fact.
Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir.
2001). A claim is anticipated only if each and every element as set
forth in the claim is found, either expressly or inherently described in
a single prior art reference. Verdegaal Bros. Inc. v. Union Oil Co. of
California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir.
1987).
An invention is not patentable under 35 U.S.C. § 103 if it is
obvious. KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1745-46, 82
USPQ2d 1385, 1400 (2007). The facts underlying an obviousness
inquiry include:
Under § 103, the scope and content of the prior art are to
be determined; differences between the prior art and the
claims at issue are to be ascertained; and the level of
ordinary skill in the pertinent art resolved. 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.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). Additionally,
“[t]he combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable
results.” KSR at 1739, 82 USQP2d at 1395.
On appeal, Applicants bear the burden of showing that the
Examiner has not established a legally sufficient basis for combining
the teachings of the prior art. Applicants may sustain its burden by
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