Appeal 2007-1461
Application 10/463,956
interpreted by one of ordinary skill in the art." In re Am. Acad. Of Sci.
Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004).
An applicant “may demonstrate an intent to deviate from the ordinary and
accustomed meaning of a claim term by including in the specification
expressions of manifest exclusion or restriction, representing a clear
disavowal of claim scope.” Id. 367 F.3d at 1365, 70 USPQ2d at 1831.
Anticipation under 35 U.S.C. § 102 requires that a prior art reference
describe each and every limitation of a claimed invention with “sufficient
specificity” to establish anticipation. Atofina v. Great Lakes Chem. Corp.,
441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006)).
“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, (3) the level of skill in the art, and (4) where
in evidence, so-called secondary considerations. 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.”)
“[T]o reject claims in an application under section 103, an examiner
must show an unrebutted prima facie case of obviousness.” In re Kahn,
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: September 9, 2013