Appeal No. 2006-1294
Application No. 10/430,963
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 U.S. at 17-18, 148 USPQ at 1335; accord In re Rouffet, 149 F.3d 1350, 1355,
47 USPQ2d 1453, 1456 (Fed. Cir. 1998). “We have explained that ‘[t]o reject
claims in an application under section 103, an examiner must show an unrebutted
prima facie case of obviousness…. On appeal to the Board, an applicant can
overcome a rejection by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.’ ” Id. (quoting Rouffet, 149 F.3d at 1355, 47 USPQ2d at 1456).
Section 112, second paragraph, is satisfied if a person skilled in the field of
the invention would reasonably understand the claim when read in the context of
the specification. Marley Mouldings Ltd. v Mikron Industries, Inc., 417 F.3d
1356, 1359, 75 USPQ2d 1954, 1956 (Fed. Cir. 2005) (citing Union Pac. Res. Co.
v. Chesapeake Energy Corp., 236 F.3d 684, 692, 57 USPQ2d 1293, 1297 (Fed. Cir.
2001) (the definiteness requirement set forth in '112, & 2 "focuses on whether
those skilled in the art would understand the scope of the claim when the claim is
read in light of the rest of the specification")); Miles Labs., Inc. v. Shandon, 997
F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed. Cir. 1993) (if the claims "reasonably
apprise those skilled in the art of the scope of the invention, ' 112 demands no
more"); In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971) (the
indefiniteness inquiry asks whether the claims "circumscribe a particular area with
a reasonable degree of precision and particularity").
ANALYSIS
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