Appeal 2007-3583
Application 10/238,147
single caps may be used to allow use of only a portion of the wells
of the microplate (Fig. 9; col. 2, ll. 11-13; col. 2, ll. 52-54; and col.
5, ll. 25-38).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations. See Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 148 USPQ 459, 467
(1966). “[A]nalysis [of whether the subject matter of a claim is obvious]
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41, 82 USPQ2d 1385, 1396
(2007), quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336-37
(Fed. Cir. 2006). As stated by the Court in KSR, 127 S. Ct. at 1739-40, 82
USPQ2d at 1395:
Neither the enactment of § 103 nor the analysis in Graham
disturbed this Court’s earlier instructions concerning the need
for caution in granting a patent based on the combination of
elements found in the prior art. For over a half century, the
Court has held that a ‘patent for a combination which only
unites old elements with no change in their respective functions
… obviously withdraws what is already known in to the field of
its monopoly and diminishes the resources available to skillful
men.’ Great Atlantic & Pacific Tea Co. v. Supermarket
Equipment Corp., [340 U.S. 147, 152 (1950)]. This is a
principal reason for declining to allow patents for what is
obvious. The combination of familiar elements according to
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