Appeal 2007-1318
Application 09/726,779
1347, 51 USPQ2d 1943, 1946 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475,
1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994).
"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, 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.
During examination of patent application, a claim is given its broadest
reasonable construction consistent with the specification. In re Prater, 415
F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969). "[T]he words of
a claim 'are generally given their ordinary and customary meaning.'"
Phillips v. AWH Corp., 415 F.3d 1303, 1312, 75 USPQ2d 1321, 1326 (Fed.
Cir. 2005) (en banc) (internal citations omitted). The "ordinary and
customary meaning of a claim term is the meaning that the term would have
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