Appeal 2007-1451
Application 09/970,146
1 if any of the structures or compositions within the scope of the claim is known in
2 the prior art." Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed.
3 Cir. 2001). "The identical invention must be shown in as complete detail as is
4 contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9
5 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required
6 by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is
7 not required. In re Bond, 910 F.2d 831, 832, 15 USPQ2d 1566, 1567 (Fed. Cir.
8 1990).
9 Obviousness
10 A claimed invention is unpatentable if the differences between it and the prior art
11 are “such that the subject matter as a whole would have been obvious at the time
12 the invention was made to a person having ordinary skill in the art.” 35 U.S.C. §
13 103(a) (2000); In re Kahn, 441 F.3d 977, 985, 78 USPQ2d 1329, 1334 (Fed. Cir.
14 2006) (citing Graham v. John Deere Co., 383 U.S. 1, 13-14, (1966)). In Graham,
15 the Court held that that the obviousness analysis begins with several basic factual
16 inquiries: “[(1)] the scope and content of the prior art are to be determined; [(2)]
17 differences between the prior art and the claims at issue are to be ascertained; and
18 [(3)] the level of ordinary skill in the pertinent art resolved.” 383 U.S. at 17. After
19 ascertaining these facts, the obviousness of the invention is then determined
20 “against th[e] background” of the Graham factors. Id. at 17-18.
21 The Supreme Court has provided guidelines for determining obviousness based
22 on the Graham factors. KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d
23 1385 (2007). “A combination of familiar elements according to known methods is
24 likely to be obvious when it does no more than yield predictable results. Id at 1731,
25 82 USPQ2d at 1396. “When a work is available in one field of endeavor, design
10
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