Appeal Number: 2006-1650
Application Number: 09/903,500
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. 383 U.S. at 17, 148 USPQ at 467. 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).
ANALYSIS
We affirm the rejection of claim 18 on two grounds. First, the claim does
not specify what delivery preference the recipient chooses to the level of detail
argued by the Appellant. The term “delivery preferences” as it appears in the
preamble and in the body of the claim is broader than whether the recipient desires
electronic or paper mail transmission1. The term “delivery preferences” is broad
1 The specification refers to the choice of whether paper or electronic delivery is
preferred as a customer choice of delivery mode (emphasis added), this being one
of several examples of delivery preferences enumerated on p. 4.
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