Appeal 2007-0676
Application 09/803,221
one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004).
Once we ascertain the scope and meaning of the claims, we then assess the
obviousness rejections. “Section 103 forbids issuance of a patent when ‘the
differences between the subject matter sought to be patented and the prior art are
such that the subject 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,
(3) the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. 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.”)
ANALYSIS
The Examiner, in his reading of Ernest, found it lacked disclosure of a
“collar formed on the shank” of a screw, as recited in claim 1, and thus combined
the teaching of Ernest with Damm, which teaches a collar formed as part of the
shank of a screw. To be clear, we find that Ernest discloses all of the elements of
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