Appeal 2007-2240
Application 09/818,016
1 that is used by courts in litigation, when interpreting the claims of
2 issued patents in connection with determinations of infringement and
3 validity.” In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320 (Fed. Cir.
4 1989); accord In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023
5 (Fed. Cir. 1997) (“It would be inconsistent with the role assigned to
6 the PTO in issuing a patent to require it to interpret claims in the same
7 manner as judges who, post-issuance, operate under the assumption
8 the patent is valid.”). Instead, as we explained above, the PTO is
9 obligated to give claims their broadest reasonable interpretation
10 during examination.
11 In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827,
12 1830 (Fed. Cir. 2004).
13 Obviousness
14 These claims are under rejection for obviousness. A claimed invention is
15 unpatentable if the differences between it and the prior art are “such that the
16 subject matter as a whole would have been obvious at the time the invention was
17 made to a person having ordinary skill in the art.” 35 U.S.C. § 103(a) (2000); In re
18 Kahn, 441 F.3d 977, 985, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006) (citing Graham
19 v. John Deere Co., 383 U.S. 1, 13-14, (1966)). In Graham, the Court held that that
20 the obviousness analysis begins with several basic factual inquiries: “[(1)] the
21 scope and content of the prior art are to be determined; [(2)] differences between
22 the prior art and the claims at issue are to be ascertained; and [(3)] the level of
23 ordinary skill in the pertinent art resolved.” 383 U.S. at 17. After ascertaining
24 these facts, the obviousness of the invention is then determined “against th[e]
25 background” of the Graham factors. Id. at 17-18.
26 The Supreme Court has provided guidelines for determining obviousness based
27 on the Graham factors. KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d
28 1385 (2007). “[a] combination of familiar elements according to known methods
16
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