Appeal 2006-1847
Application 10/295,813
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 unsolved needs, failure of others, etc.”
Id., 383 at 17-18, 148 USPQ at 1335; accord In re Rouffet, 149 F.3d 1350,
1355, 47 USPQ2d 1453, 1455-56 (Fed. Cir. 1998). “We have explained that
to 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. (citing Rouffet, 149 F.3d at
1355, 47 USPQ2d at 1455).
Moreover, it is well settled that, generally speaking, it would have
been obvious for an artisan with ordinary skill to develop workable or
even optimum ranges for result-effective parameters. In re Boesch, 617
F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980); In re Aller, 220 F.2d
454, 456, 105 USPQ 233, 235 (CCPA 1955). In re Woodruff, 919 F.2d
1575, 1577, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). The courts have
found exceptions to this rule in cases where the results of optimizing a
variable, which was known to be result effective, were unexpectedly
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: September 9, 2013