Appeal 2007-1867
Application 09/864,113
1 substantial utility or of how to use for such purpose a compound
2 produced by a fully disclosed process is, under the present state of the
3 law, entirely adequate to anticipate a claim to either the product or the
4 process and, at the same time, entirely inadequate to support the
5 allowance of such a claim.” Id. at 1405; see Schoenwald, 964 F.2d at
6 1124; In re Samour, 571 F.2d 559, 563-64 (CCPA 1978). The reason
7 is that section 112 “provides that the specification must enable one
8 skilled in the art to ‘use’ the invention whereas [section] 102 makes
9 no such requirement as to an anticipatory disclosure.” (Citations
10 omitted).
11 Rasmusson v. Smithkline Beecham Corp., 413 F.3d 1318, 1325, 75 USPQ2d 1297,
12 1302 (Fed. Cir. 2000).
13 Obviousness
14 A claimed invention is unpatentable if the differences between it and the
15 prior art are “such that the subject matter as a whole would have been obvious at
16 the time the invention was made to a person having ordinary skill in the art.” 35
17 U.S.C. § 103(a) (2000); KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d
18 1385 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14, 148 USPQ 459, 465
19 (1966).
20 In Graham, the Court held that that the obviousness analysis is bottomed on
21 several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
22 determined; [(2)] differences between the prior art and the claims at issue are to be
23 ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
24 U.S. at 17, 148 USPQ at 467. See also KSR Int’l v. Teleflex Inc., 127 S.Ct. at 1734
25 82 USPQ2d at 1391. “The combination of familiar elements according to known
26 methods is likely to be obvious when it does no more than yield predictable
27 results.” KSR, at 1739, 82 USPQ2d at 1396.
28 “When a work is available in one field of endeavor, design incentives and
29 other market forces can prompt variations of it, either in the same field or in a
8
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