Appeal 2006-3342
Application 10/195,217
1 shelf member from being pushed rearwardly off the shelf (Fish, col. 5, ll. 1-
2 10; Fig. 1).
3 PRINCIPLES OF LAW
4 Anticipation
5 It is well settled that apparatus claims must distinguish over prior art
6 apparatus by the structure defined by the claims, and not by a process or
7 function performed by the apparatus. A prior art apparatus having the same
8 structure as a claimed apparatus renders a claimed apparatus unpatentable
9 under § 102 as long as it is capable of performing the claimed process or
10 function. In re Yanush, 477 F.2d 958, 959, 177 USPQ 705, 706 (CCPA
11 1973); Ex Parte Masham, 2 USPQ2d 1647, 1648 (Bd. Pat. App. & Int.
12 1987).
13 Obviousness
14 An invention is not patentable under 35 U.S.C. § 103 if it is obvious.
15 KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1745-46, 82 USPQ2d 1385,
16 1400 (2007). The facts underlying an obviousness inquiry include: Under §
17 103, the scope and content of the prior art are to be determined; differences
18 between the prior art and the claims at issue are to be ascertained; and the
19 level of ordinary skill in the pertinent art resolved. Against this background
20 the obviousness or nonobviousness of the subject matter is determined. Such
21 secondary considerations as commercial success, long felt but unsolved
22 needs, failure of others, etc., might be utilized to give light to the
23 circumstances surrounding the origin of the subject matter sought to be
24 patented. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459,
25 467 (1966). In addressing the findings of fact, “[t]he combination of
5
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