Ex Parte Cooney et al - Page 8



            Appeal No. 2007-1110                                                   Page 8                    
            Application No. 09/832,603                                                                       

            2. “    The problem is to interpret claims ‘in view of the specification’ without                
            unnecessarily importing limitations from the specification into the claims.” E-Pass              
            Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369, 67 USPQ2d 1947, 1950 (Fed.                      
            Cir. 2003).                                                                                      
            Obviousness                                                                                      
            3.  “Sectio    n 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, and (3) thelevel                
            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 Courtin                    
            Graham further noted that evidence of secondary considerations “might be util  ized              
            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.                                        










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