Appeal No. 2001-0106
Application 08/855,811
While the statements of the Examiner may be correct, we remain guided in our
analysis by Section 103(a) of the patent statute, which provides as follows:
A patent may not be obtained though the invention is not identically disclosed or
described as set forth in section 102 of this title, if 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.
Patentability shall not be negatived by the manner in which the invention was
made.
35 U.S.C. Section 103(a) (1994).
In 1966, the Supreme Court in Graham v. John Deere Co., 383 U.S.1, 148 USPQ
459, 467 (1966) interpreted and applied section 103, stating:
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 unsolved 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.
The Federal Circuit has determined that only after considering the four Graham
criteria together can the decision maker make the legal determination of whether the
invention is nonobvious. Panduit v. Dennison Manufacturing Co., 810 F.2d 1561, 1
USPQ2d 1593 (Fed. Cir.), cert denied, 481 U.S. 1052 (1987).
A critical step in analyzing the patentability of claims pursuant to section 103(a) is
casting the mind back to the time of invention, to consider the thinking of one of ordinary
skill in the art, guided only by the prior art references and the then-accepted wisdom in
the field. ); In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999). Close adherence to this methodology is especially important in cases where the
very ease with which the invention can be understood may prompt one "to fall victim to
9
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007