Appeal 2007-2005
Application 10/066,110
1 A claimed invention is unpatentable if the differences between it and the prior
2 art are “such that the subject matter as a whole would have been obvious at the
3 time the invention was made to a person having ordinary skill in the art.” 35 U.S.C.
4 § 103(a) (2000); In re Kahn, 441 F.3d 977, 985 (Fed. Cir. 2006) (citing Graham v.
5 John Deere Co., 383 U.S. 1, 13-14, (1966)). In Graham, the Court held that that
6 the obviousness analysis begins with several basic factual inquiries: “[(1)] the
7 scope and content of the prior art are to be determined; [(2)] differences between
8 the prior art and the claims at issue are to be ascertained; and [(3)] the level of
9 ordinary skill in the pertinent art resolved.” 383 U.S. at 17. After ascertaining these
10 facts, the obviousness of the invention is then determined “against th[e]
11 background” of the Graham factors. Id. at 17-18.
12 The Supreme Court has provided guidance for determining obviousness based
13 on the Graham factors. KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727, 82
14 USPQ2d 1385 (April 30, 2007). “The combination of familiar elements according
15 to known methods is likely to be obvious when it does no more than yield
16 predictable results.” id. 127 S. Ct. at 1739, 82 USPQ2d at 1395. “In determining
17 whether the subject matter of a patent claim is obvious, neither the particular
18 motivation nor the avowed purpose of the patentee controls. What matters is the
19 objective reach of the claim. If the claim extends to what is obvious, it is invalid
20 under § 103.” id. 127 S. Ct. at 1741-42, 82 USPQ2d at 1397. “One of the ways in
21 which a patent’s subject matter can be proved obvious is by noting that there
22 existed at the time of invention a known problem for which there was an obvious
23 solution encompassed by the patent’s claims.” id. 127 S. Ct. at 1742, 82 USPQ2d
24 at 1397.
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