Appeal 2007-0477
Application 10/003,510
1 PRINCIPLES OF LAW
2 On appeal, Appellants bear the burden of showing that the Examiner
3 has not established a legally sufficient basis for anticipation based on the
4 Porras patent.
5 Appellants may sustain this burden by showing that the prior art
6 reference relied upon by the Examiner fails to disclose an element of the
7 claim. It is axiomatic that anticipation of a claim under § 102 can be found
8 only if the prior art reference discloses every element of the claim. See In re
9 King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and
10 Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730
11 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
12 On appeal, Appellants bear the burden of showing that the Examiner
13 has not established a legally sufficient basis for combining the teachings of
14 Porras with those of Trcka.
15 “Section 103 forbids issuance of a patent when ‘the differences
16 between the subject matter sought to be patented and the prior art are such
17 that the subject matter as a whole would have been obvious at the time the
18 invention was made to a person having ordinary skill in the art to which said
19 subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
20 1734, 82 USPQ2d 1385, 1391 (2007). The question of obviousness is
21 resolved on the basis of underlying factual determinations including (1) the
22 scope and content of the prior art, (2) any differences between the claimed
23 subject matter and the prior art, (3) the level of skill in the art, and (4) where
24 in evidence, so-called secondary considerations. Graham v. John Deere Co.,
25 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See also KSR, 127 S. Ct. at
5
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