Appeal 2007-1992
Application 09/318,447
To resolve the level of skill in this case, the Examiner should address
the facts set forth in the recent decision in Daiichi Sankyo Co., Ltd.v. Apotex,
Inc., 2006-1564 (Fed. Cir,. Sep. 12, 2007), pp. 3-4:.
“Factors that may be considered in determining level of
ordinary skill in the art include: (1) the educational level of the
inventor; (2) type of problems encountered in the art; (3) prior art
solutions to those problems; (4) rapidity with which innovations are
made; (5) sophistication of the technology; and (6) educational level
of active workers in the field.” Envtl. Designs, Ltd. v. Union Oil Co.,
713 F.2d 693, 696 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v.
All Orthopedic Appliances, Inc., 707 F.3d 1376, 1381-82 (Fed. Cir.
1983)). These factors are not exhaustive but are merely a guide to
determining the level of ordinary skill in the art.
In this way the record will include evidence of the level of skill in the art
and, as a result, all the Graham factual inquiries will have been addressed
and the burden of establishing a prima face case of obviousness satisfied.
Our remarks above with respect to the rejection of claims 108-117,
151-156, and 176-183 apply as well to the rejection of claims 118-123, 126-
137, and 159-163 under 35 U.S.C. §103(a) over Joseph, Teper, Official
Notice, and Hafner. Here, too, additional evidence of the level of skill in the
art would result in all the Graham factual inquiries having been addressed
and the burden of establishing a prima face case of obviousness satisfied.
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