Appeal 2007-2140
Application 09/892,790
Patent 5,917,679
(5)
New Ground of Rejection of Claims 21-23, 30-34, and 41
Reissue claims 21-23, 30-34, and 41 are rejected under 35 U.S.C.
§ 102(e) as being anticipated by the Chang patent. See Findings of
Fact 54-55.
For the reasons supra, we reject of claims 21-23, 30-34, and 41 under
35 U.S.C. § 102(e) using our authority under 37 C.F.R. § 41.50(b).
(6)
New Ground of Rejection of Claims 25-26 and 36-37
Reissue claims 25-26 and 36-37 are rejected under 35 U.S.C. § 103 as
being unpatentable over the Chang and Chapin patent.
An invention that would have been obvious is not patentable. KSR
Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d 1385 (2007). The
question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level
of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ
459, 467 (1966). See also KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391
(“While the sequence of these questions might be reordered in any particular
case, the [Graham] factors continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
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