Appeal 2007-2460
Application 10/709,179
Anticipation under 35 U.S.C. § 102 is a question of fact. Brown v.
3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001). A claim
is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described in a single prior art reference.
Verdegaal Bros. Inc. v. Union Oil Co. of California, 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir. 1987).
An invention is not patentable under 35 U.S.C. § 103 if it is obvious.
KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1745-46, 82 USPQ2d 1385,
1400 (2007). The facts underlying an obviousness inquiry include:
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the
obviousness or nonobviousness of the subject matter is
determined. Such secondary considerations as commercial
success, long felt but unsolved needs, failure of others, etc.,
might be utilized to give light to the circumstances surrounding
the origin of the subject matter sought to be patented.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). In addressing the
findings of fact, “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR at 1739, 82 USQP2d at 1395. As explained in KSR:
If a person of ordinary skill can implement a predictable
variation, §103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his
or her skill. Sakraida and Anderson's-Black Rock are
illustrative — a court must ask whether the improvement is
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