Appeal 2007-2070
Application 10/123,457
1 Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir.
2 1987). "When a claim covers several structures or compositions, either generically
3 or as alternatives, the claim is deemed anticipated if any of the structures or
4 compositions within the scope of the claim is known in the prior art." Brown v.
5 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). "The identical invention must be
6 shown in as complete detail as is contained in the ... claim." Richardson v. Suzuki
7 Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). The elements must be arranged
8 as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of
9 terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
10 Obviousness
11 A claimed invention is unpatentable if the differences between it and the
12 prior art are “such that the subject matter as a whole would have been obvious at
13 the time the invention was made to a person having ordinary skill in the art.”
14 35 U.S.C. § 103(a) (2000); KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727, 1734 (2007);
15 Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966).
16 In Graham, the Court held that that the obviousness analysis is bottomed on
17 several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
18 determined; [(2)] differences between the prior art and the claims at issue are to be
19 ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
20 U.S. at 17. See also KSR Int’l v. Teleflex Inc., 127 S.Ct. at 1734. “The
21 combination of familiar elements according to known methods is likely to be
22 obvious when it does no more than yield predictable results.” KSR, at 1739.
23 “When a work is available in one field of endeavor, design incentives and
24 other market forces can prompt variations of it, either in the same field or in a
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: September 9, 2013