Appeal 2007-1218
Application 10/850,258
in the pertinent art.” In re Kahn, 441 F.3d 977, 985, 78 USPQ2d 1329,
1334-35 (Fed. Cir. 2006) citing 35 U.S.C. § 103(a) (2000); Graham v. John
Deere Co., 383 U.S. 1, 13-14, 148 USPQ 459, 467 (1966). “The ultimate
determination of whether an invention would have been obvious is a legal
conclusion based on underlying findings of fact.” Id. (citing In re
Dembiczak, 175 F.3d 994, 998, 50 USPQ2d 1614, 1616 (Fed. Cir. 1999)).
“In assessing whether subject matter would have been non-obvious
under § 103, the Board follows the guidance of the Supreme Court in
Graham v. John Deere Co. 383 U.S. at 17, 148 USPQ at 467. The Board
determines ‘the scope and content of the prior art,’ ascertains ‘the
differences between the prior art and the claims at issue,’ and resolves ‘the
level of ordinary skill in the pertinent art.’” Id. (citing Dann v. Johnston, 425
U.S. 219, 226, 189 USPQ 257, 261 (1976)) (quoting Graham, 383 U.S. at
17, 148 USPQ at 467). “Against this background, the Board determines
whether the subject matter would have been obvious to a person of ordinary
skill in the art at the time of the asserted invention.” Id. (citing Graham, 383
U.S. at 17, 148 USPQ 467). In making this determination, the Board can
assess evidence related to secondary indicia of non-obviousness like
“commercial success, long felt but unsolved needs, failure of others, etc.”
Id., 383 at 17-18, 148 USPQ at 1335; accord In re Rouffet, 149 F.3d 1350,
1355, 47 USPQ2d 1453, 1455-56 (Fed. Cir. 1998). “We have explained that
to reject claims in an application under section 103, an examiner must show
an unrebutted prima facie case of obviousness. ‘On appeal to the Board, an
applicant can overcome a rejection by showing insufficient evidence of
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