Appeal 2007-1483
Application 10/344,390
D. PRINCIPLES OF LAW
A claimed invention is not patentable if the subject matter of the
invention would have been obvious to a person having ordinary skill in the
art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 82
USPQ2d 1385 (2007); Graham v. John Deere Co., 383 U.S. 1 (1966).
Facts relevant to a determination of obviousness include (1) the scope
and content of the prior art, (2) any differences between the claimed
invention and the prior art, (3) the level of skill in the art, and (4) any
relevant objective evidence of obviousness or non-obviousness. KSR, 127 S.
Ct. at 1734, 82 USPQ2d at 1388, Graham, 383 U.S. at 17-18.
The question under 35 U.S.C. § 103 is not merely what the references
teach but what they would have suggested to one of ordinary skill in the art
at the time the invention was made. In re Lamberti, 545 F.2d 747, 750, 192
USPQ 278, 280 (CCPA 1976).
One of ordinary skill in the art is presumed to have skills apart from
what the prior art references expressly disclose. See In re Sovish, 769 F.2d
738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985). A person of ordinary skill is
also a person of ordinary creativity, not an automaton. KSR, 127 S. Ct. at
1742, 82 USPQ2d at 1397.
The combination of familiar elements according to known methods is
likely obvious when the combination does no more than yield predictable
results. KSR, 127 S. Ct. at 1739, 82 USPQ2d at 1395.
All that is required for obviousness under 35 U.S.C. § 103 is a
reasonable expectation of success. O’Farrell, 853 F.2d 894, 904, 7 USPQ2d
1673, 1681 (Fed. Cir. 1988).
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