Ex Parte Frattarola - Page 7



             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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