Appeal 2007-0687
Application 10/797,422
1 in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 127 S. Ct.
2 1727, 82 USPQ2d 1385 (2007); Graham v. John Deere Co., 383 U.S. 1
3 (1966).
4 Facts relevant to a determination of obviousness include (1) the scope
5 and content of the prior art, (2) any differences between the claimed
6 invention and the prior art, (3) the level of skill in the art, and (4) any
7 relevant objective evidence of obviousness or non-obviousness. KSR, 127 S.
8 Ct. at 1734, 82 USPQ2d at 1389, Graham, 383 U.S. at 17-18.
9 One of ordinary skill in the art is presumed to have skills apart from
10 what the prior art references expressly disclose. See In re Sovish, 769 F.2d
11 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985). A person of ordinary skill is
12 also a person of ordinary creativity, not an automaton. KSR, 127 S. Ct. at
13 1742, 82 USPQ2d at 1397.
14 The question under 35 U.S.C. § 103 is not merely what the references
15 teach but what they would have suggested to one of ordinary skill in the art
16 at the time the invention was made. All disclosures of the prior art,
17 including unpreferred embodiments, must be considered. In re Lamberti,
18 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976).
19 An express suggestion to substitute one equivalent for another need
20 not be present to render such a substitution obvious. In re Fout, 675 F.2d
21 297, 301, 213 USPQ 532, 536 (CCPA 1982).
22 A rejection premised upon a proper combination of references cannot
23 be overcome by attacking the references individually. In re Keller, 642 F.2d
24 413, 426, 208 USPQ 871, 882 (CCPA 1981).
8
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