Appeal 2007-1417
Application 09/877,536
appellant's burden to establish that the Examiner did not sustain the
necessary burden and to show that the Examiner erred -- on appeal we will
not start with a presumption that the Examiner is wrong. See In re Kahn,
441 F.3d 977, 985-86, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006) ("On appeal
to the Board, an applicant can overcome a rejection [for obviousness] by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.")
(quoting In re Rouffet, 149 F.3d 1350, 1355 47 USPQ2d 1453, 1455 (Fed.
Cir. 1998)).
"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
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