Appeal 2007-0726
Application 10/264,561
V. PRINCIPLES OF LAW
“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)(quoting 35 U.S.C. § 103(a)).
The analysis is objective and 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, and (3) the
level of skill in the art. 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.”) The Court in Graham further noted that evidence of secondary
considerations, such 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.”
383 U.S. at 18, 148 USPQ at 467.
In KSR, the Supreme Court emphasized that “the principles laid down
in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11 How. 248.”
KSR, 127 S. Ct. at 1739, 82 USPQ2d at 1395 (citing Graham v. John Deere
Co., 383 U.S. 1, 12, 148 USPQ 459, 464 (1966) (emphasis added)), and
reaffirmed principles based on its precedent that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. The Court explained:
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