Appeal 2007-2742
Application 09/764,618
1 Obviousness
2 A claimed invention is unpatentable if the differences between it and the
3 prior art are “such that the subject matter as a whole would have been obvious at
4 the time the invention was made to a person having ordinary skill in the art.” 35
5 U.S.C. § 103(a) (2000); KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d
6 1385 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14, 148 USPQ 459, 465
7 (1966).
8 In Graham, the Court held that that the obviousness analysis is bottomed on
9 several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
10 determined; [(2)] differences between the prior art and the claims at issue are to be
11 ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
12 U.S. at 17, 148 USPQ at 467. See also KSR Int’l v. Teleflex Inc., 127 S.Ct. at 1734
13 82 USPQ2d at 1391. “The combination of familiar elements according to known
14 methods is likely to be obvious when it does no more than yield predictable
15 results.” KSR, at 1739, 82 USPQ2d at 1395.
16 “When a work is available in one field of endeavor, design incentives and
17 other market forces can prompt variations of it, either in the same field or [in] a
18 different one. If a person of ordinary skill [in the art] can implement a predictable
19 variation, § 103 likely bars its patentability.” Id. at 1740, 82 USPQ2d at 1396.
20 “For the same reason, if a technique has been used to improve one device,
21 and a person of ordinary skill in the art would recognize that it would improve
22 similar devices in the same way, using the technique is obvious unless its actual
23 application is beyond his or her skill.” Id.
24 “Under the correct analysis, any need or problem known in the field of
25 endeavor at the time of invention and addressed by the patent can provide a reason
11
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