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
11
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