Appeal Number: 2006-1938
Application Number: 10/823,886
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 an
application under section 103, an examiner must show an
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