Appeal 2006-3387
Application 09/385,489
demonstrate either (1) Jones’s attempts to commercialize its invention, or (2)
Jones’s failure of commercial success.
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, 148 USPQ 459, 467 (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. Graham also suggests analysis of secondary
considerations such as commercial success, long felt but unsolved needs, failure of
others, etc. Id.
In determining the scope and content of the prior art, we consider not only
whether the elements are found expressly in the prior art reference, but also
whether the elements are found inherently therein. “To establish inherency, the
extrinsic evidence must make clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and that it would be so
recognized by persons of ordinary skill. Inherency, however, may not be
established by probabilities or possibilities. The mere fact that a certain thing may
result from a given set of circumstances is not sufficient.” In re Robertson, 169
F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) (citations omitted)
(internal quotation marks omitted).
11
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: September 9, 2013