Appeal 2007-2875
Application 10/447,732
1 It is important to note that "[t]he invention is, for purposes of the ‘written
2 description’ inquiry, whatever is now claimed.” Vas-Cath, 935 F.2d at 1564, 19
3 USPQ2d at 1117.
4 The prior art may anticipate a claimed invention, and thereby render it
5 non-novel, either expressly or inherently. In re Cruciferous Sprout Litig., 301 F.3d
6 1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002), cert. denied, 538 U.S. 907
7 (2003). Express anticipation occurs when the prior art expressly discloses each
8 limitation (i.e., each element) of a claim. Id. In addition, “[i]t is well settled that a
9 prior art reference may anticipate when the claim limitations not expressly found in
10 that reference are nonetheless inherent in it.” Id.
11 In Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467
12 (1966), the Supreme Court set out a framework for applying the statutory language
13 of § 103:
14 [T]he scope and content of the prior art are to be determined; differences
15 between the prior art and the claims at issue are to be ascertained; and the
16 level of ordinary skill in the pertinent art resolved. Against this background
17 the obviousness or nonobviousness of the subject matter is determined. Such
18 secondary considerations as commercial success, long felt but unsolved
19 needs, failure of others, etc., might be utilized to give light to the
20 circumstances surrounding the origin of the subject matter sought to be
21 patented.” [Id., at 17-18, 148 USPQ at 467.]
22
22 “While the sequence of these questions might be reordered in any particular case,
23
24 the factors continue to define the inquiry that controls. If a court, or patent
25 examiner, conducts this analysis and concludes the claimed subject matter was
26 obvious, the claim is invalid or unpatentable under § 103.” See KSR Int’l v.
27 Teleflex Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1391 (2007). “To facilitate
28 review this analysis should be made explicit.” Id. at 1741, 82 USPQ2d at 1396. It
29 can be important to identify a reason that would have prompted a person of
5
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: September 9, 2013