Appeal 2007-2451
Application 10/694,925
1 issued patents in connection with determinations of infringement and
2 validity.” In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320 (Fed. Cir.
3 1989); accord In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023
4 (Fed. Cir. 1997) (“It would be inconsistent with the role assigned to
5 the PTO in issuing a patent to require it to interpret claims in the same
6 manner as judges who, post-issuance, operate under the assumption
7 the patent is valid.”). Instead, as we explained above, the PTO is
8 obligated to give claims their broadest reasonable interpretation
9 during examination.
10 In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827,
11 1830 (Fed. Cir. 2004).
12 Obviousness
13 A claimed invention is unpatentable if the differences between it and the prior
14 art are “such that the subject matter as a whole would have been obvious at the
15 time the invention was made to a person having ordinary skill in the art.” 35 U.S.C.
16 § 103(a) (2000); In re Kahn, 441 F.3d 977, 985, 78 USPQ2d 1329, 1335 (Fed. Cir.
17 2006) (citing Graham v. John Deere Co., 383 U.S. 1, 13-14, (1966)). In Graham,
18 the Court held that that the obviousness analysis begins with several basic factual
19 inquiries: “[(1)] the scope and content of the prior art are to be determined; [(2)]
20 differences between the prior art and the claims at issue are to be ascertained; and
21 [(3)] the level of ordinary skill in the pertinent art resolved.” 383 U.S. at 17. After
22 ascertaining these facts, the obviousness of the invention is then determined
23 “against th[e] background” of the Graham factors. Id. at 17-18.
24 The Supreme Court has provided guidelines for determining obviousness based
25 on the Graham factors. KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d
26 1385 (2007). “[a] combination of familiar elements according to known methods
27 is likely to be obvious when it does no more than yield predictable results. Id at
28 1739, 82 USPQ2d at 1395. “When a work is available in one field of endeavor,
13
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