Appeal 2007-1235
Application 09/748,125
10. Ricker discloses a translator which uses a data dictionary (i.e., X12) to
transform a message from one format to another “well-formed” one. P. 8, l.
6.
11. Ricker indicates that, in the case of converting documents in XML to
EDI, the “X12 data dictionaries will ensure the XML document is compliant
with a well-formed EDI message.” P. 8, l. 6.
C. Principles of Law
“Section 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) the level 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 Court in Graham further
noted that evidence of secondary considerations “might be utilized 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.
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
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