Appeal 2007-2111
Application 09/921,204
1 21. [P]referably, the box is made of thin cardboard or
2 reinforced paper. (Col. 2, ll. 35-36.)
3
4 22. The other exposed surfaces of the box includes advertising
5 indicia to urge the consumer to buy the contained product with
6 the additional benefit of having a collectible card storable
7 within the empty box. (Col. 3, ll. 3-6.)
8
9 23. It is an object of the present invention to induce purchasers
10 of a product contained in a box. (Col. 1, ll. 34-35.)
11
12 PRINCIPLES OF LAW
13 Obviousness
14 A claimed invention is unpatentable if the differences between it and the
15 prior art are “such that the subject matter as a whole would have been
16 obvious at the time the invention was made to a person having ordinary skill
17 in the art.” 35 U.S.C. § 103(a) (2000); In re Kahn, 441 F.3d 977, 985, 78
18 USPQ2d 1329, 1334 (Fed. Cir. 2006) (citing Graham v. John Deere Co.,
19 383 U.S. 1, 13-14, 148 USPQ 459, 464-65 (1966)). In Graham, the Court
20 held that that the obviousness analysis begins with several basic factual
21 inquiries: “[(1)] the scope and content of the prior art are to be determined;
22 [(2)] differences between the prior art and the claims at issue are to be
23 ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.”
24 383 U.S. at 17, 148 USPQ at 467. After ascertaining these facts, the
25 obviousness of the invention is then determined “against th[e] background”
26 of the Graham factors. Id. at 17-18, 148 USPQ at 467.
27 The Federal Circuit has repeatedly recognized that to establish a prima
28 facie case of obviousness, the references being combined do not need to
29 explicitly suggest combining their teachings. See e.g., Kahn, 441 F.3d at
10
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