Appeal 2007-2097
Application 10/746,644
19) The Examiner found that Carter teaches that it was known in
the art to recycle unreacted ore and/or coke to a titanium dioxide
process and Alexander did not dispute this finding. (Final Office
Action, p. 4, Appeal Br., pages 6-7).
D. Appeal Brief
20) Alexander’s Appeal Brief states that no evidence appendix was
included with the brief as no evidence was submitted or relied upon.
(Appeal Br. at 7).
PRINCIPLES OF LAW
An invention is not patentable under 35 U.S.C. § 103 if it is
obvious. KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1745-46
(2007). The facts underlying an obviousness inquiry include:
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.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). In addressing
the findings of fact, “[t]he combination of familiar elements according
to known methods is likely to be obvious when it does no more than
yield predictable results.” KSR at 1739. As explained in KSR:
If a person of ordinary skill can implement a predictable
variation, §103 likely bars its patentability. For the same
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