Appeal 2007-2533
Application 09/972,434
1 terminology is not required. In re Bond, 910 F.2d 831, 832, 15 USPQ2d 1566,
2 1567 (Fed. Cir. 1990).
3 Obviousness
4 A claimed invention is unpatentable if the differences between it and the
5 prior art are “such that the subject matter as a whole would have been obvious at
6 the time the invention was made to a person having ordinary skill in the art.” 35
7 U.S.C. § 103(a) (2000); KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d
8 1385 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14, 148 USPQ 459, 465
9 (1966).
10 In Graham, the Court held that that the obviousness analysis is bottomed on
11 several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
12 determined; [(2)] differences between the prior art and the claims at issue are to be
13 ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
14 U.S. at 17, 148 USPQ at 467. See also KSR Int’l v. Teleflex Inc., 127 S.Ct. at 1734
15 82 USPQ2d at 1391. “The combination of familiar elements according to known
16 methods is likely to be obvious when it does no more than yield predictable
17 results.” KSR, at 1739, 82 USPQ2d at 1396.
18 “When a work is available in one field of endeavor, design incentives and
19 other market forces can prompt variations of it, either in the same field or in a
20 different one. If a person of ordinary skill in the art can implement a predictable
21 variation, § 103 likely bars its patentability.” Id. at 1740, 82 USPQ2d at 1396.
22 “For the same reason, if a technique has been used to improve one device,
23 and a person of ordinary skill in the art would recognize that it would improve
24 similar devices in the same way, using the technique is obvious unless its actual
25 application is beyond his or her skill.” Id.
8
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