Appeal 2006-3327
Application 10/137,582
PRINCIPLES OF LAW
To determine whether a prima facie case of obviousness has been
established, we are guided by the factors set forth in Graham v. John Deere Co.,
383 U.S. 1, 17 (1966), viz., (1) the scope and content of the prior art; (2) the
differences between the prior art and the claims at issue; and (3) the level of
ordinary skill in the art.1
In addition to our review of the Graham factors, we also consider “whether a
person of ordinary skill in the art, possessed with the understandings and
knowledge reflected in the prior art, and motivated by the general problem facing
the inventor, would have been led to make the combination recited in the claims.”
In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1337 (Fed. Cir. 2006). From
this it may be determined whether the overall disclosures, teachings, and
suggestions of the prior art, and the level of skill in the art – i.e., the
understandings and knowledge of persons having ordinary skill in the art at the
time of the invention-support the legal conclusion of obviousness. Id.
To establish a prima facie case of obviousness, the references being
combined do not need to explicitly suggest combining their teachings. See e.g.,
Kahn, 441 F.3d at 987-88, 78 USPQ2d at 1337-38 (“the teaching, motivation, or
1 Although Graham also suggests analysis of secondary considerations such as
commercial success, long felt but unsolved needs, failure of others, etc., Appellant
presented no such evidence of secondary considerations for the Board’s
consideration.
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