Appeal 2007-1751
Application 09/769,511
1 and precision; where an inventor chooses to give terms uncommon meanings, the
2 inventor must set out any uncommon definition in some manner within the patent
3 disclosure so as to give one of ordinary skill in the art notice of the change).
4 Obviousness
5 A claimed invention is unpatentable if the differences between it and the
6 prior art are “such that the subject matter as a whole would have been obvious at
7 the time the invention was made to a person having ordinary skill in the art.”
8 35 U.S.C. § 103(a) (2000); KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d
9 1385 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966).
10 In Graham, the Court held that that the obviousness analysis is bottomed on
11 several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
12 determined; [(2)] differences between the prior art and the claims at issue are to be
13 ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
14 U.S. at 17. See also KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d 1385
15 (2007).
16 A combination of familiar elements according to known methods is likely to be
17 obvious when it does no more than yield predictable results. KSR, at 1731, 82
18 USPQ2d at 1396.
19 For the same reason, “if a technique has been used to improve one device, and
20 a person of ordinary skill in the art would recognize that it would improve similar
21 devices in the same way, using the technique is obvious unless its actual
22 application is beyond that person’s skill.” Id.
23 “In determining whether the subject matter of a patent claim is obvious, neither
24 the particular motivation nor the avowed purpose of the patentee controls. What
8
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