Appeal 2007-1786
Application 10/121,365
1 reference. See Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 633, 2
2 USPQ2d 1051, 1054 (Fed. Cir. 1987).
3 A claimed invention is unpatentable if the differences between it and the
4 prior art are “such that the subject matter as a whole would have been
5 obvious at the time the invention was made to a person having ordinary skill
6 in the art.” 35 U.S.C. § 103(a) (2000); In re Kahn, 441 F.3d 977, 985 (Fed.
7 Cir. 2006) (citing Graham v. John Deere Co., 383 U.S. 1, 13-14, 148 USPQ
8 459, 465 (1966)). In Graham, the Court held that that the obviousness
9 analysis begins with several basic factual inquiries: “[(1)] the scope and
10 content of the prior art are to be determined; [(2)] differences between the
11 prior art and the claims at issue are to be ascertained; and [(3)] the level of
12 ordinary skill in the pertinent art resolved.” Graham, 383 U.S. at 17, 148
13 USPQ at 467. After ascertaining these facts, the obviousness of the
14 invention is then determined “against th[e] background” of the Graham
15 factors. Id. at 17-18, 148 USPQ at 467.
16 The Supreme Court has provided guidance for determining obviousness
17 based on the Graham factors. KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727,
18 82 USPQ2d 1385 (April 30, 2007). “The combination of familiar elements
19 according to known methods is likely to be obvious when it does no more
20 than yield predictable results.” Id. 127 S.Ct. at 1739, 82 USPQ2d at 1395.
21 “In determining whether the subject matter of a patent claim is obvious,
22 neither the particular motivation nor the avowed purpose of the patentee
23 controls. What matters is the objective reach of the claim. If the claim
24 extends to what is obvious, it is invalid under § 103.” Id. 127 S.Ct. at 1741-
25 42, 82 USPQ2d at 1397.
26
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