Appeal 2007-0474
Application 10/692,885
1 that the subject matter as a whole would have been obvious at the time the
2 invention was made to a person having ordinary skill in the art to which said
3 subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
4 1734, 82 USPQ2d 1385, 1391 (2007). The question of obviousness is
5 resolved on the basis of underlying factual determinations including (1) the
6 scope and content of the prior art, (2) any differences between the claimed
7 subject matter and the prior art, (3) the level of skill in the art, and (4) where
8 in evidence, so-called secondary considerations. Graham v. John Deere Co.,
9 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See also KSR, 127 S. Ct. at
10 1734, 82 USPQ2d at 1391 (“While the sequence of these questions might be
11 reordered in any particular case, the [Graham] factors continue to define the
12 inquiry that controls.”)
13 In KSR, the Supreme Court emphasized “the need for caution in
14 granting a patent based on the combination of elements found in the prior
15 art,” id. at 1739, 82 USPQ2d at 1395, and discussed circumstances in which
16 a patent might be determined to be obvious. In particular, the Supreme
17 Court emphasized that “the principles laid down in Graham reaffirmed the
18 ‘functional approach’ of Hotchkiss, 11 How. 248.” KSR, 127 S. Ct. at 1739,
19 82 USPQ2d at 1395 (citing Graham v. John Deere Co., 383 U.S. 1, 12
20 (1966) (emphasis added)), and reaffirmed principles based on its precedent
21 that “[t]he combination of familiar elements according to known methods is
22 likely to be obvious when it does no more than yield predictable results.” Id.
23 The Court explained:
24 When a work is available in one field of endeavor,
25 design incentives and other market forces can
26 prompt variations of it, either in the same field or a
27 different one. If a person of ordinary skill can
28 implement a predictable variation, §103 likely bars
9
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