Appeal 2007-1326
Application 10/237,067
1 In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834
2 (Fed. Cir. 2004).
3
4 Obviousness
5 A claimed invention is unpatentable if the differences between it and the prior
6 art are “such that the subject matter as a whole would have been obvious at the
7 time the invention was made to a person having ordinary skill in the art.” 35 U.S.C.
8 § 103(a) (2000); In re Kahn, 441 F.3d 977, 985 (Fed. Cir. 2006) (citing Graham v.
9 John Deere Co., 383 U.S. 1, 13-14, (1966)). In Graham, the Court held that that
10 the obviousness analysis begins with several basic factual inquiries: “[(1)] the
11 scope and content of the prior art are to be determined; [(2)] differences between
12 the prior art and the claims at issue are to be ascertained; and [(3)] the level of
13 ordinary skill in the pertinent art resolved.” 383 U.S. at 17. After ascertaining
14 these facts, the obviousness of the invention is then determined “against th[e]
15 background” of the Graham factors. Id. at 17-18.
16 The Supreme Court has provided guidelines for determining obviousness based
17 on the Graham factors. KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d
18 1385 (2007). “A combination of familiar elements according to known methods is
19 likely to be obvious when it does no more than yield predictable results. Id. at
20 1731, 82 USPQ2d at 1396. “When a work is available in one field of endeavor,
21 design incentives and other market forces can prompt variations of it, either in the
22 same field or a different one. If a person of ordinary skill can implement a
23 predictable variation, §103 likely bars its patentability.” Id. For the same reason,
24 “if a technique has been used to improve one device, and a person of ordinary skill
25 in the art would recognize that it would improve similar devices in the same way,
26 using the technique is obvious unless its actual application is beyond that person’s
16
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