Appeal 2007-0589
Application 09/852,959
The Supreme Court in Graham v. John Deere, 383 U.S. 1, 17-18, 148
USPQ 459, 467 (1966), stated that three factual inquiries underpin any
determination of obviousness:
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented. As indicia of obviousness or
nonobviousness, these inquiries may have relevancy.
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The
Examiner can satisfy this burden by showing some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness. KSR Int’l. v. Teleflex Inc., 127 S.Ct. 1727, 1741, 82 USPQ2d
1385, 1396 (2007) (citing In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329
(Fed. Cir. 2006)). Only if this initial burden is met does the burden of
coming forward with evidence or argument shift to the Appellants. Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d at 1472,
223 USPQ at 788.
Rejections on obviousness grounds cannot be sustained by mere
conclusory statements. KSR Int’l. v. Teleflex Inc., 127 S.Ct. at 1741, 82
USPQ2d at 1396 (2007) (citing In re Kahn, 441 F.3d 977, 988, 78 USPQ2d
1329 (Fed. Cir. 2006)).
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: September 9, 2013