Appeal 2007-0394
Application 09/769,036
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.’” KSR
Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1391 (2007).
The question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, and (3) the level
of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459,
467 (1966). See also KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391 (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”) The Court in
Graham further noted that evidence of secondary considerations “might be utilized
to give light to the circumstances surrounding the origin of the subject matter
sought to be patented.” 383 U.S. at 18, 148 USPQ at 467.
In KSR, the Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” id. at 1739, 82
USPQ2d at 1395, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that “the
principles laid down in Graham reaffirmed the ‘functional approach’ of Hotchkiss,
11 How. 248.” KSR, 127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing Graham v.
John Deere Co., 383 U.S. 1, 12 (1966) (emphasis added)), and reaffirmed
principles based on its precedent that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more than
yield predictable results.” Id. The Court explained:
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