Appeal 2007-3540
Application 09/946,616
1 if any of the structures or compositions within the scope of the claim is known in
2 the prior art." Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed.
3 Cir. 2001). "The identical invention must be shown in as complete detail as is
4 contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236,
5 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as
6 required by the claim, but this is not an ipsissimis verbis test, i.e., identity of
7 terminology is not required. In re Bond, 910 F.2d 831, 832, 15 USPQ2d 1566,
8 1567 (Fed. Cir. 1990).
9 Obviousness
10 A claimed invention is unpatentable if the differences between it and the prior
11 art are “such that the subject matter as a whole would have been obvious at the
12 time the invention was made to a person having ordinary skill in the art.” 35
13 U.S.C. § 103(a) (2000); KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d
14 1385 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14, 148 USPQ 459, 465
15 (1966).
16 In Graham, the Court held that that the obviousness analysis is bottomed on
17 several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
18 determined; [(2)] differences between the prior art and the claims at issue are to be
19 ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
20 U.S. at 17, 148 USPQ at 467. See also KSR Int’l v. Teleflex Inc., 127 S.Ct. at 1734
21 82 USPQ2d at 1391. “The combination of familiar elements according to known
22 methods is likely to be obvious when it does no more than yield predictable
23 results.” KSR, at 1739, 82 USPQ2d at 1395.
24 “When a work is available in one field of endeavor, design incentives and other
25 market forces can prompt variations of it, either in the same field or [in] a different
10
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