Ex Parte Zimmer et al - Page 5



            Appeal 2007-2064                                                                                  
            Application 10/116,562                                                                            

                   casinos, and (3) now being offered at casinos in Las Vegas and Reno.                       
                                                                                                             
            C. PRINCIPLES OF LAW                                                                              
                   Section 103 forbids issuance of a patent when “the differences between the                 
            subject matter sought to be patented and the prior art are such that the subject                  
            matter as a whole would have been obvious at the time the invention was made to a                 
            person having ordinary skill in the art to which said subject matter pertains.”  35               
            U.S.C. § 103(a) (2002).                                                                           
                   In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the Court                   
            set out a framework for applying the statutory language of §103, language itself                  
            based on the logic of the earlier decision in Hotchkiss v. Greenwood, 11 How. 248                 
            (1851), and its progeny. See 383 U.S. at 15-17. The analysis is objective:                        
                   Under §103, the scope and content of the prior art are to be determined;                   
                   differences between the prior art and the claims at issue are to be                        
                   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., at 17-18.                                                                                    
                   “While the sequence of these questions might be reordered in any particular                
            case, the factors continue to define the inquiry that controls. If a court, or patent             
            examiner, conducts this analysis and concludes the claimed subject matter was                     
            obvious, the claim is invalid under §103.” KSR Int’l v. Teleflex Inc., 127 S. Ct.                 
            1727, 1734, 82 USPQ2d 1385, 1391 (2007).                                                          
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