Appeal 2007-1780
Application 10/340,127
Claims 16, 17, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the teachings of Grasso in view of Schwab.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for the respective details
thereof.
STATEMENT OF LAW
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
127 S. Ct. 1727, 1742 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 1740. Appellant has the burden on appeal to
the Board to demonstrate error in the Examiner’s position. See In re Kahn,
441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an
applicant can overcome a rejection [under § 103] by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness.”) (quoting In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). Therefore, we look to
Appellants’ Briefs to show error in the proffered prima facie case.
ANALYSIS
Independent claim 1
We consider first the Examiner’s rejection of independent claim 1 as
being unpatentable over the teachings of Grasso in view of Doss.
Appellants contend there is no motivation to combine Grasso with the
teachings of Doss. Specifically, Appellants argue:
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