Appeal 2007-0820
Application 09/734,808
1 of the invention were familiar with the use of bioauthentication
2 devices to obtain bioauthentication information to identify users
3 (Harada, col. 7, ll. 14-23).
4
5 PRINCIPLES OF LAW
6 “Section 103 forbids issuance of a patent when ‘the differences
7 between the subject matter sought to be patented and the prior art are such
8 that the subject matter as a whole would have been obvious at the time the
9 invention was made to a person having ordinary skill in the art to which said
10 subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
11 1734, 82 USPQ2d 1385, 1391 (2007). The question of obviousness is
12 resolved on the basis of underlying factual determinations including (1) the
13 scope and content of the prior art, (2) any differences between the claimed
14 subject matter and the prior art, (3) the level of skill in the art. Graham v.
15 John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See also
16 KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391 (“While the sequence of these
17 questions might be reordered in any particular case, the [Graham] factors
18 continue to define the inquiry that controls.”) The Court in Graham further
19 noted that evidence of secondary considerations, such as commercial
20 success, long felt but unsolved needs, failure of others, etc., “might be
21 utilized to give light to the circumstances surrounding the origin of the
22 subject matter sought to be patented.” 383 U.S. at 18, 148 USPQ at 467.
23
24 In KSR, the Supreme Court emphasized “the need for caution in
25 granting a patent based on the combination of elements found in the prior
26 art,” id. at 1739, 82 USPQ2d at 1395, and discussed circumstances in which
9
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