Appeal 2007-0511
Application 10/699,508
1 Facts relevant to a determination of obviousness include (1) the scope
2 and content of the prior art, (2) any differences between the claimed
3 invention and the prior art, (3) the level of skill in the art, and (4) any
4 relevant objective evidence of obviousness or non-obviousness. KSR, 127 S.
5 Ct. at 1734, 82 USPQ2d at 1389, Graham, 383 U.S. at 17-18.
6 The question under 35 U.S.C. § 103 is not merely what the references
7 teach but what they would have suggested to one of ordinary skill in the art
8 at the time the invention was made. All disclosures of the prior art,
9 including unpreferred embodiments, must be considered. In re Lamberti,
10 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976).
11 One of ordinary skill in the art is presumed to have skills apart from
12 what the prior art references expressly disclose. See In re Sovish, 769 F.2d
13 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985). A person of ordinary skill is
14 also a person of ordinary creativity, not an automaton. KSR, 127 S. Ct. at
15 1742, 82 USPQ2d at 1397.
16 All that is required for obviousness under 35 U.S.C. § 103 is a
17 reasonable expectation of success. O’Farrell, 853 F.2d 894, 904, 7 USPQ2d
18 1673, 1681 (Fed. Cir. 1988).
19 A rejection premised upon a proper combination of references cannot
20 be overcome by attacking the references individually. In re Keller, 642 F.2d
21 413, 426, 208 USPQ 871, 882 (CCPA 1981).
22 If the word “means” appears in a claim element in combination with a
23 function, it is presumed to be a means-plus-function element to which
24 35 U.S.C. § 112, sixth paragraph, applies. Al-Site Corp. v. VSI Int’l Inc.,
25 174 F.3d 1308, 1318, 50 USPQ2d 1161, 1166 (Fed. Cir. 1999).
14
Page: Previous 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 Next
Last modified: September 9, 2013