Appeal 2007-2188
Application 10/150,667
Claims 1, 3-12, 15, 16, 33, 35-44, 47-53, 75, and 76 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Prevorsek in view of
Fels. Claims 13, 14, 45, and 46 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Prevorsek in view of Fels and Price.
§ 103(a) Rejection over Prevorsek and Fels
Appellants argue the claims as a group. Thus, we select claim 1 as the
representative claim on which we decide this appeal. Under 35 U.S.C.
§ 103, the factual inquiry into obviousness requires a determination of: (1)
the scope and content of the prior art; (2) the differences between the
claimed subject matter and the prior art; (3) the level of ordinary skill in the
art; and (4) any secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). “[A]nalysis [of whether the
subject matter of a claim is obvious] need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex, Inc., 127
S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007). See DyStar Textilfarben
GmBH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361, 80
USPQ2d 1641, 1645 (Fed. Cir. 2006) (“The motivation need not be found in
the references sought to be combined, but may be found in any number of
sources, including common knowledge, the prior art as a whole, or the
nature of the problem itself.”). “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR, 127 S. Ct. at 1739, 82 USPQ2d at
1395. The analysis supporting obviousness, however, should be made
explicit and should “identify a reason that would have prompted a person of
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