Appeal No. 2000-1296 Page 6
Application No. 08/794,869
to provide a suitable wear and erosion resistant liner as
shown and taught by Woodson.
The Supreme Court observed in Graham v. John Deere Co.,
383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966):
While the ultimate question of patent validity is
one of law, . . . the § 103 condition [that is,
nonobviousness] . . . lends itself to several basic
factual inquiries. 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 unresolved 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. As indicia of
obviousness or nonobviousness, these inquiries may
have relevancy.
Thus, initially, the scope and content of the applied
prior art are to be determined. This the examiner has done
(answer, p. 3). Next, the differences between the applied
prior art and the claims at issue are to be ascertained. The
examiner has not correctly ascertained the actual differences
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