Appeal 2007-1896
Application 10/223,864
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734, 82 USPQ2d 1385, 1391 (2007). The question of obviousness is
resolved on the basis of underlying factual determinations including (1) the
scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, (3) the level of skill in the art, and (4) where
in evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See also KSR, 127 S. Ct. at
1734, 82 USPQ2d at 1391 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
“[T]o reject claims in an application under section 103, an examiner
must show an unrebutted prima facie case of obviousness.” In re Kahn,
441 F.3d 977, 985-86, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006) (emphasis
omitted). “On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.” Id.
(emphasis omitted).
D. Analysis
We first turn to the question of whether Tanigawa suggests heating
oysters as claimed. We answer this question in the affirmative.
As a first matter, we cannot agree with Appellants that one of ordinary
skill in this art would read Tanigawa as teaching heating to cook the oysters.
Tanigawa desires to retain the raw character of the oyster, not to cook it (FF
1 and 3). That the heating step is not a cooking step is further evidenced by
the last paragraph of the reference which suggests cooking the oysters in a
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