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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