Appeal 2006-2056
Application 10/102,192
In re Watson, 517 F.2d 465, 477, 186 USPQ 11, 20 (CCPA 1975); In re
Knowlton, 481 F.2d 1357, 1366, 178 USPQ 486, 492 (CCPA 1973). This
requirement has usually been viewed from the perspective of a potential
infringer, "so that they may more readily and accurately determine the
boundaries of protection involved and evaluate the possibility of
infringement and dominance." Hammack, 427 F.2d at 1382, 166 USPQ at
208.
“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)).
Nonfunctional descriptive material cannot render nonobvious an
invention that is otherwise obvious over the prior art. In re Gulack, 703 F.2d
1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983)(when descriptive material
is not functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability). Our
reviewing court and its predecessor have frequently cautioned the “Patent
and Trademark Office (PTO) must consider all claim limitations when
determining patentability of an invention over the prior art.” In re Lowry, 32
F.3d 1579, 1582-83, 32 USPQ2d 1031, 1034 (Fed. Cir. 1994) quoting In re
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