Appeal 2007-1168
Application 10/211,407
be ascertained; and 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.
Graham v. John Deere Co., 383 U.S. 1, 17–18, 148 USPQ 459, 467 (1966).
As the Supreme Court explained recently, a court assessing the obviousness
or nonobviousness of a claimed invention, “must ask whether the
improvement is more than the predictable use of prior art elements according
to their established functions." KSR Int'l, Co. v. Teleflex Inc., 127 S. Ct.
1727, 82 USPQ2d 1385 (2007). The Court explained further 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.” KSR Int'l,
127 S. Ct. at 1739, 82 USQP2d at 1395.
Claims in an application for patent are to be given their broadest
reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. Phillips v. AWH Corp., 415
F.3d 1303, 1316, 75 USPQ2d 1321, 1328 (Fed. Cir. 2005).
On appeal, the applicant bears the burden of showing that the
Examiner has not established a legally sufficient basis for combining the
teachings of the prior art. The applicant may sustain his burden by showing
that where the Examiner relies on a combination of disclosures, the
Examiner failed to provide sufficient evidence to show that one having
ordinary skill in the art would have done what Applicant did. United States
v. Adams, 383 U.S. 39 (1966); In re Fridolph, 134 F.2d 414, 415, 57 USPQ
15
Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Next
Last modified: September 9, 2013