Appeal 2007-2745
Application 09/761,671
1 within the patent disclosure so as to give one of ordinary skill in the art notice of
2 the change).
3 Obviousness
4 A claimed invention is unpatentable if the differences between it and the
5 prior art are “such that the subject matter as a whole would have been obvious at
6 the time the invention was made to a person having ordinary skill in the art.” 35
7 U.S.C. § 103(a) (2000); KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727, 1734, 82
8 USPQ2d 1385, 1391 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14, 148
9 USPQ 459, 466 (1966).
10 In Graham, the Court held that that the obviousness analysis is bottomed on
11 several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
12 determined; [(2)] differences between the prior art and the claims at issue are to be
13 ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
14 U.S. at 17, 148 USPQ at 467. See also KSR Int’l v. Teleflex Inc., 127 S.Ct. at
15 1734, 82 USPQ2d at 1391. “The combination of familiar elements according to
16 known methods is likely to be obvious when it does no more than yield predictable
17 results.” Id. 127 S.Ct. at 1739, 82 USPQ2d at 1395.
18 “When a work is available in one field of endeavor, design incentives and
19 other market forces can prompt variations of it, either in the same field or in a
20 different one. If a person of ordinary skill in the art can implement a predictable
21 variation, § 103 likely bars its patentability.” Id. 127 S. Ct. at 1740, USPQ2d at
22 1396.
23 “For the same reason, if a technique has been used to improve one device,
24 and a person of ordinary skill in the art would recognize that it would improve
14
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