Appeal 2007-0122
Application 10/358,626
comfort over the prior art resilient grips and contoured grips (id.). McCall
further discloses that the grip may be applied to any of a wide range of
writing implements as well as other manual implements with working tips,
for example, paint brushes, jeweler’s tools, and other devices (McCall, col.
4, ll. 5-12).
C. Principles of Law
A claimed invention is unpatentable if the differences between it and
the prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the pertinent art. 35 U.S.C. § 103(a) (2000). Factors to consider in
determining obviousness include “‘the scope and content of the prior art,’”
the “‘differences between the prior art and the claims at issue,’” and “‘the
level of ordinary skill in the pertinent art.’” Dann v. Johnston, 425 U.S. 219,
226 (1976) (quoting Graham v. John Deere Co., 383 U.S. 1, 17 (1966)).
To support a prima facie case of obviousness, an examiner must show,
by a preponderance of the evidence, that a person of ordinary skill in the art,
possessed with the understanding 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, 1337-38 (Fed. Cir. 2006).
In making the determination of obviousness, evidence related to
secondary indicia of non-obviousness like “commercial success, long felt
but unresolved needs, failure of others, etc.” is also relevant. Graham, 383
U.S. at 17-18.
“[T]o reject claims in an application under section 103, an examiner
must show an unrebutted prima facie case of obviousness. On appeal to the
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