Appeal 2007-1904
Application 10/790,081
The Appellants appeal from the Examiner’s decision rejecting the
claims on appeal under 35 U.S.C. § 103(a).
FACTUAL FINDINGS, PRINCIPLES OF LAW, ISSUE, and ANALYSIS
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations (e.g.,
unexpected results). Graham v. John Deere Co. of Kansas City, 383 U.S. 1,
17-18, 148 USPQ 459, 467 (1966). “[A]nalysis [of whether the subject
matter of a claim would be obvious] need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex, Inc., 127
S. Ct. 1727, 1740-741, 82 USPQ2d 1385, 1396 (2007) quoting In re Kahn,
441 F.3d 977, 988, 78 USPQ2d 1329, 1336-337 (Fed. Cir. 2006); see also
DyStar Textilfarben GmBH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1361, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006)(“The motivation
need not be found in the references sought to be combined, but may be
found in any number of sources, including common knowledge, the prior art
as a whole, or the nature of the problem itself.”); In re Bozek, 416 F.2d 1385,
1390, 163 USPQ 545, 549 (CCPA 1969)(“Having established that this
knowledge was in the art, the examiner could then properly rely, as put forth
by the solicitor, on a conclusion of obviousness ‘from common knowledge
and common sense of the person of ordinary skill in the art without any
specific hint or suggestion in a particular reference.’”).
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