Appeal 2007-2783
Reexamination 90/005,509
Patent 5,533,499
E. Principles of law
To establish anticipation under 35 U.S.C. § 102, each and every
element in a claim, arranged as is recited in the claim, must be found in a
single prior art reference. Karsten Manufacturing Corp. v. Cleveland Golf
Co., 242 F.3d 1376, 1383, 58 USPQ2d 1286, 1291 (Fed. Cir. 2001).
Anticipation can be found when a claim limitation is inherent or otherwise
implicit in the relevant reference. Standard Havens Products, Inc. v. Gencor
Industries, Inc., 953 F.2d 1360, 1369, 21 USPQ2d 1321, 1328 (Fed. Cir.
1991).
Obviousness is a legal determination made on the basis of underlying
factual inquiries including (1) the scope and content of the prior art; (2) the
differences between the claimed invention and the prior art; (3) the level of
ordinary skill in the art; and (4) any objective evidence of unobviousness,
Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966).
One with ordinary skill in the art is presumed to have skills apart from what
the prior art references explicitly say. See In re Sovish, 769 F.2d 738, 743,
226 USPQ 771, 774 (Fed. Cir. 1985). A person of ordinary skill in the art is
also a person of ordinary creativity, not an automaton. KSR International
Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1397 (2007).
A prima facie case of obviousness means the evidence of prior art
would reasonably allow the conclusion the Examiner seeks and compels
such a conclusion if the Applicant produces no evidence to rebut it. In re
Spada, 911 F.2d at 707 n.3, 15 USPQ2d at 1657 n.3 (Fed. Cir. 1990); RCA
Corp. v. Applied Digital Data Systems Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984).
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