Appeal 2007-1315
Application 09/828,437
1 Anticipation
2 "A claim is anticipated only if each and every element as set forth in the claim
3 is found, either expressly or inherently described, in a single prior art reference."
4 Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d
5 1051, 1053 (Fed. Cir. 1987). "When a claim covers several structures or
6 compositions, either generically or as alternatives, the claim is deemed anticipated
7 if any of the structures or compositions within the scope of the claim is known in
8 the prior art." Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed.
9 Cir. 2001). "The identical invention must be shown in as complete detail as is
10 contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236,
11 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as
12 required by the claim, but this is not an ipsissimis verbis test, i.e., identity of
13 terminology is not required. In re Bond, 910 F.2d 831, 832, 15 USPQ2d 1566,
14 1567 (Fed. Cir. 1990).
15 Obviousness
16 A claimed invention is unpatentable if the differences between it and the prior
17 art are “such that the subject matter as a whole would have been obvious at the
18 time the invention was made to a person having ordinary skill in the art.” 35 U.S.C.
19 § 103(a) (2000); In re Kahn, 441 F.3d 977, 985, 78 USPQ2d 1329, 1334 (Fed. Cir.
20 2006) (citing Graham v. John Deere Co., 383 U.S. 1, 13-14, 148 USPQ 459, 464-
21 65 (1966)). In Graham, the Court held that that the obviousness analysis begins
22 with several basic factual inquiries: “[(1)] the scope and content of the prior art are
23 to be determined; [(2)] differences between the prior art and the claims at issue are
24 to be ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.”
25 383 U.S. at 17, 148 USPQ at 467. After ascertaining these facts, the obviousness
12
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