Appeal 2007-1204
Application 10/370,869
serving as a locating feature for an insert 7 which uses the T-slot to clamp the
insert in place on the base 1 using T-shaped bolts 53 (Wharton, col. 5, ll. 66-75,
col. 6, ll. 1-4).
PRINCIPLES OF LAW
During prosecution the PTO gives claims their “broadest reasonable
interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372,
54 USPQ2d 1664, 1667 (Fed. Cir. 2000).
To determine whether a prima facie case of obviousness has been
established, we are guided by the factors set forth in Graham v. John Deere Co.,
383 U.S. 1, 17, 148 USPQ 459, 467 (1966), viz., (1) the scope and content of the
prior art; (2) the differences between the prior art and the claims at issue; and (3)
the level of ordinary skill in the art. “[T]he principles laid down in Graham
reaffirmed the “functional approach” of Hotchkiss, 11 How. 248, 13 L.Ed. 683.”
KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739, 82 USPQ2d 1385, 1395
(2007).
In addition to the findings under Graham, there must also be “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”. See In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329,
1336 (Fed. Cir. 2006) (cited with approval in KSR, 127 S. Ct. at 1741, 82 USPQ2d
at 1396).
The application of common sense may control the combining of references.
Common sense teaches, however, that familiar items may
have obvious uses beyond their primary purposes, and in
5
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