Appeal 2007-1594
Application 10/600,379
prior art reference may anticipate when the claim limitations not expressly found in
that reference are nonetheless inherent in it. Id.
“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.”
In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the Court
set out a framework for applying the statutory language of §103, language itself
based on the logic of the earlier decision in Hotchkiss v. Greenwood, 11 How. 248
(1851), and its progeny. See 383 U.S., at 15-17. The analysis is objective:
Under §103, the scope and content of the prior art are to be determined;
differences between the prior art and the claims at issue are to be
ascertained; and the level of ordinary skill in the pertinent art resolved.
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., at 17-18.
While the sequence of these questions might be reordered in any particular case,
the factors continue to define the inquiry that controls. If a court, or patent
examiner, conducts this analysis and concludes the claimed subject matter was
obvious, the claim is invalid under §103.” KSR Int’l v. Teleflex Inc., 127 S.Ct.
1727, 1734, 82 USPQ2d 1385, 1391 (2007).
The enablement provision of the Patent Act requires that the patentee
provide a written description of the invention “in such full, clear, concise, and
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