Appeal No. 2006-0985
Application No. 09/766,696
Principles of Law
A claimed invention is unpatentable if the differences between it 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 pertinent art.
In re Kahn, 441 F3d. 977, 985, 78 USPQ2d 1329, 1334-35 (Fed. Cir. 2006) citing
35 U.S.C. § 103(a) (2000); Graham v. John Deere Co., 383 U.S. 1, 13-14 ,148
USPQ 459, 467 (1966). The ultimate determination of whether an invention would
have been obvious is a legal conclusion based on underlying findings of fact. Id.
(citing In re Dembiczak, 175 F.3d 994, 998, 50 USPQ2d 1614, 1616 (Fed. Cir.
1999)).
In assessing whether subject matter would have been non-obvious under
§ 103, the Board follows the guidance of the Supreme Court in Graham v. John
Deere Co. Kahn at 985, 78 USPQ2d at 1335. The Board determines “‘the scope
and content of the prior art,’” ascertains “‘the differences between the prior art and
the claims at issue,’” and resolves “‘the level of ordinary skill in the pertinent art.’”
Id. (citing Dann v. Johnston, 425 U.S. 219, 226, 189 USPQ 257, 261 (1976))
(quoting Graham, 383 U.S. at 17, 148 USPQ at 467). Against this background, the
Board determines whether the subject matter would have been obvious to a person
of ordinary skill in the art at the time of the asserted invention. Id. (Citing
Graham, 383 U.S. at 17, 148 USPQ 467). In making this determination, the Board
can assess evidence related to secondary indicia of non-obviousness like
“commercial success, long felt but unresolved needs, failure of others, etc.” Id.,
383 at 17-18, 148 USPQ at 1335; accord In re Rouffett, 149 F.3d 1350, 1355, 47
USPQ2d 1453, 1456 (Fed. Cir. 1998). We have explained that to reject claims in
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