Ex Parte Steele - Page 7

                 Appeal 2007-2218                                                                                        
                 Application 10/035,595                                                                                  


                 only if the prior art reference discloses every element of the claim.  See In re                        
                 King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and                                       
                 Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730                                     
                 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).                                                    
                        “Section 103 forbids issuance of a patent when ‘the differences                                  
                 between the subject matter sought to be patented and the prior art are such                             
                 that the subject matter as a whole would have been obvious at the time the                              
                 invention was made to a person having ordinary skill in the art to which said                           
                 subject matter pertains.’”  KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,                            
                 1734, 82 USPQ2d 1385, 1391 (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.”)                                                                                
                        “[R]ejections on obviousness grounds cannot be sustained by mere                                 
                 conclusory statements; instead, there must be some articulated reasoning                                
                 with some rational underpinning to support the legal conclusion of                                      
                 obviousness.” KSR., 127 S. Ct. at 1741 (citing In re Kahn, 441 F.3d 977, 988                            
                 (Fed. Cir. 2006)).                                                                                      




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