Appeal 2007-3126
Application 10/359,275
subject matter recited in these claims is believed to be found in Abdelgawad and
Zunick”? (Br. 4-5.)
PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or on any
other ground, of presenting a prima facie case of unpatentability.” In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992). A rejection under 35 U.S.C. § 103(a) must
be based on the following factual determinations: (1) the scope and content of the
prior art; (2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) objective indicia of non-obviousness.
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1360 (Fed. Cir. 2006) (citing Graham v. John Deere Co., 383 U.S. 1, 17
(1966)).
“The combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results.” Leapfrog
Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161, (Fed. Cir. 2007) (quoting
KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1739 (2007)). Discussing the
obviousness of claimed combinations of elements of prior art, KSR explains:
When a work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in the same
field or a different one. 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 [v. AG Pro, Inc., 425 U.S. 273, (1976)] and Anderson's-
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