Appeal No. 2006-1294
Application No. 10/430,963
907(2003). Express anticipation occurs when the prior art expressly discloses each
limitation (i.e., each element) of a claim. Id. In addition, A[i]t is well settled that a
prior art reference may anticipate when the claim limitations not expressly found in
that reference are nonetheless inherent in it.@ Id.
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 F.3d 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 441 F.3d 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,
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