Appeal 2007-3417
Application 10/351,739
crystal of single claim 3? Claim 8 is not argued separately, therefore, it
stands or falls with claim 1.
For the reasons below, we determine that Appellants have not
overcome the rejection.
“[T]o reject claims in an application under section 103, an examiner
must show an unrebutted prima facie case of obviousness.” In re Kahn, 441
F.3d 977, 985-86, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006) (emphasis
omitted). “On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.” Id.
(emphasis omitted).
“Section 103 forbids issuance of a patent when ‘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 to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734, 82 USPQ2d 1385, 1391 (2007). The question of obviousness is
resolved on the basis of underlying factual determinations including (1) the
scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, (3) the level of skill in the art, and (4) where
in evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See also 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.”).
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