Appeal 2007-2985
Application 010/669,978
1 Pavement Salvage Co., 396 U.S. 57, 90 S.Ct. 305 (1969) (radiant-heat
2 burner used for its intended purpose in combination with a spreader and a
3 tamper and screed); Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 96 S.Ct.
4 1532, 1537 (1976) (the involved patent simply arranges old elements with
5 each performing the same function it had been known to perform); Dunbar
6 v. Myers, 4 Otto (94 U.S.) 187, 195 (1876) (ordinary mechanics know how
7 to use bolts, rivets and screws and it is obvious that any one knowing how to
8 use such devices would know how to arrange a deflecting plate at one side
9 of a circular saw which had such a device properly arranged on the other
10 side).
11 To render an invention obvious, the prior art does not have to address
12 the same problem addressed by a patent applicant. KSR, 127 S.Ct. at
13 1741-42, 82 USPQ2d at 1397; In re Dillon, 919 F.2d 688, 16 USPQ2d 1897
14 (Fed. Cir. 1990) (en banc); In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d
15 1309, 1311 (Fed. Cir. 1996) ("[a]lthough the motivation to combine here
16 differs from that of the applicant, the motivation in the prior art to combine
17 the references does not have to be identical to that of the applicant to
18 establish obviousness." citing In re Dillon).
19
20 F. Discussion
21 Scope of claim 1
22 We begin our obviousness analysis with a determination of the scope
23 of claim 1.
24 During prosecution of a patent application, claims are given their
25 broadest reasonable interpretation consistent with the specification. In re
26 Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969)
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013