Appeal 2007-1916
Application 10/753,113
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”)
[T]he scope and content of the prior art are ...
determined; differences between the prior art and the
claims at issue are ... ascertained; and the level of
ordinary skill in the pertinent art resolved. Against this
background the obviousness or nonobviousness of the
subject matter is determined. Such secondary
considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized
to give light to the circumstances surrounding the origin
of the subject matter sought to be patented.
Id., 127 S.Ct. at 1729-30, 82 USPQ2d at 1388 (quoting Graham v. John Deere Co.,
383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966)) (internal quotations omitted).
These showings by the examiner are an essential part of complying with the
burden of presenting a prima facie case of obviousness. See Oetiker, 977 F.2d at
1445, 24 USPQ2d at 1444. Only if this initial burden is met does the burden of
coming forward with evidence or argument shift to the appellant. Id. at 1445, 24
USPQ2d at 1444. See also Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
Obviousness is then determined on the basis of the evidence as a whole and the
relative persuasiveness of the arguments. See Oetiker, 977 F.2d at 1445, 24
USPQ2d at 1444; Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
ANALYSIS
We first construe the meaning of the phrase “the controller . . . operative in
response to the neck motion detection signal and signals from the vibration sensor
8
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