Appeal 2007-1595
Application 09/751,858
1 issued patents in connection with determinations of infringement and
2 validity.” In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320 (Fed. Cir.
3 1989); accord In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023
4 (Fed. Cir. 1997) (“It would be inconsistent with the role assigned to
5 the PTO in issuing a patent to require it to interpret claims in the same
6 manner as judges who, post-issuance, operate under the assumption
7 the patent is valid.”). Instead, as we explained above, the PTO is
8 obligated to give claims their broadest reasonable interpretation
9 during examination.
10 In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364, 70 U.S.P.Q.2d 1827,
11 1830 (Fed. Cir. 2004).
12 Obviousness
13 These claims are under rejection for obviousness. A claimed invention is
14 unpatentable if the differences between it and the prior art are “such that the
15 subject matter as a whole would have been obvious at the time the invention was
16 made to a person having ordinary skill in the art.” 35 U.S.C. § 103(a) (2000); In re
17 Kahn, 441 F.3d 977, 985 (Fed. Cir. 2006) (citing Graham v. John Deere Co., 383
18 U.S. 1, 13-14, (1966)). In Graham, the Court held that that the obviousness
19 analysis begins with several basic factual inquiries: “[(1)] the scope and content of
20 the prior art are to be determined; [(2)] differences between the prior art and the
21 claims at issue are to be ascertained; and [(3)] the level of ordinary skill in the
22 pertinent art resolved.” 383 U.S. at 17. After ascertaining these facts, the
23 obviousness of the invention is then determined “against th[e] background” of the
24 Graham factors. Id. at 17-18.
25 The Supreme Court has provided guidelines for determining obviousness based
26 on the Graham factors. KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d
27 1385 (2007). “A combination of familiar elements according to known methods is
28 likely to be obvious when it does no more than yield predictable results. Id at 1731,
8
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