Appeal 2007-0708
Application 09/881,367
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).
2A. OBVIOUSNESS (Prima Facie)
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, (1) the scope and content of the prior art are to be
determined; (2) differences between the prior art and the claims
at issue are to be ascertained; and (3) 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., No. 04-1350, 2007 WL 1237837 at
13, 82 USPQ2d 1385, 1396 (Apr. 30, 2007) (citing In re Kahn, 441 F.3d
977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)). Only if this initial
burden is met does the burden of coming forward with evidence or argument
shift to the Appellant. Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See
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