Appeal 2006-3092
Application 10/601,738
35 U.S.C. § 103
A rejection under 35 U.S.C. § 103(a) must be based on the following
factual determinations: (1) the scope and content of the prior art; (2) the
level of ordinary skill in the art; (3) the differences between the claimed
invention and the prior art; and (4) objective indicia of non-obviousness.
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,
464 F.3d 1356, 1360, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006) (citing
Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966)).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161,
82 USPQ2d 1687, 1691 (Fed. Cir. 2007) (quoting KSR Int’l v. Teleflex, Inc.,
127 S. Ct. 1727, 1740-41, 82 USPQ2d 1385, 1395 (2007)). “One of the
ways in which a patent's subject matter can be proved obvious is by noting
that there existed at the time of invention a known problem for which there
was an obvious solution encompassed by the patent's claims.” KSR,
127 S. Ct. at 1742, 82 USPQ2d at 1397.
Discussing the question of obviousness of a claimed combination of
elements of prior art, KSR explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273, 189 USPQ 449 (1976)] and
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