Appeal 2006-2109
Application 10/680,678
1 must set out his uncommon definition in some manner within the
2 patent disclosure" so as to give one of ordinary skill in the art notice
3 of the change. (Citation omitted).
4 In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ 2d 1671, 1674 (Fed. Cir. 1994).
5 Obviousness
6 A claimed invention is unpatentable if the differences between it and the prior art
7 are “such that the subject matter as a whole would have been obvious at the time
8 the invention was made to a person having ordinary skill in the art.” 35 U.S.C. §
9 103(a) (2000); In re Kahn, 441 F.3d 977, 985, 78 USPQ2d 1329, 1334 (Fed. Cir.
10 2006) (citing Graham v. John Deere Co., 383 U.S. 1, 13-14, (1966)). In Graham,
11 the Court held that that the obviousness analysis begins with several basic factual
12 inquiries: “[(1)] the scope and content of the prior art are to be determined; [(2)]
13 differences between the prior art and the claims at issue are to be ascertained; and
14 [(3)] the level of ordinary skill in the pertinent art resolved.” 383 U.S. at 17. After
15 ascertaining these facts, the obviousness of the invention is then determined
16 “against th[e] background” of the Graham factors. Id. at 17-18.
17 The Supreme Court has provided guidelines for determining obviousness based
18 on the Graham factors. KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d
19 1385 (2007). “A combination of familiar elements according to known methods is
20 likely to be obvious when it does no more than yield predictable results. Id at 1731,
21 82 USPQ2d at 1396. “When a work is available in one field of endeavor, design
22 incentives and other market forces can prompt variations of it, either in the same
23 field or a different one. If a person of ordinary skill can implement a predictable
24 variation, §103 likely bars its patentability.” Id. For the same reason, “if a
25 technique has been used to improve one device, and a person of ordinary skill in
26 the art would recognize that it would improve similar devices in the same way,
12
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