Ex Parte Sommer - Page 11



             Appeal 2007-1344                                                                                  
             Application 10/045,789                                                                            
             obviousness”) (cited with approval in KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct.                 
             1727, 1741, 82 USPQ2d 1385, 1396 (2007)).  In so doing, the examiner is                           
             expected to make the factual determinations set forth in Graham v. John Deere                     
             Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966).  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 necessary determinations include: (1) the scope and content of the              
             prior art; (2) the differences between the prior art and the claims at issue; and (3)             
             the level of ordinary skill in the art.  Id.  “Against this background the obviousness            
             or nonobviousness of the subject matter is determined.  Such secondary                            
             considerations 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.”  Id. (quoting Graham v. John                 
             Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966))  (internal quotations                     
             omitted).                                                                                         

                A. Rejection of claims 1-5 and 7-11 under 35 U.S.C. § 103(a) as                                
                    unpatentable over the Manual in view of Gormley.                                           
                   Appellant argues the patentability of claims 1-5 and 7-11 on the basis that                 
             the Manual does not disclose indirect selection of control parameters by                          
             algorithmic processing of values of a plurality of bit positions of the version                   
             coding.                                                                                           
                   Contrary to the Examiner’s assertions, the Manual discloses only direct                     
             selection.  The table on 1-32 of the Manual shows version codes such as number of                 

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