Ex Parte Sato - Page 9

                Appeal 2007-1275                                                                              
                Application 09/824,248                                                                        

                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, such 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."  383 U.S. at 18, 148 USPQ at 467.  "If                 
                a court, or patent examiner, conducts this analysis and concludes the claimed                 
                subject matter was obvious, the claim is invalid under § 103."  KSR,                          
                127 S. Ct. at 1734, 82 USPQ2d at 1391.                                                        
                      The mere existence of differences between the prior art and the claim                   
                does not establish nonobviousness.  Dann v. Johnston, 425 U.S. 219, 230,                      
                189 USPQ 257, 261 (1976).  The issue is "whether the difference between                       
                the prior art and the subject matter in question 'is a difference sufficient to               
                render the claimed subject matter unobvious to one skilled in the applicable                  
                art.'"  Dann, 425 U.S. at 228-29, 189 USPQ at 261 (citation omitted).  To be                  
                nonobvious, an improvement must be "more than the predictable use of prior                    
                art elements according to their established functions."  KSR, 127 S. Ct. at                   
                1740, 82 USPQ2d at 1396.                                                                      
                      In KSR, the Supreme Court emphasized "the need for caution in                           
                granting a patent based on the combination of elements found in the prior                     
                art," id. at 1739, 82 USPQ2d at 1395, and discussed circumstances in which                    
                a patent might be determined to be obvious.  In particular, the Supreme                       
                Court emphasized that "the principles laid down in Graham reaffirmed the                      


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