Appeal 2007-4073
Application 10/739,417
1 Verdegaal Bros. Inc. v. Union Oil Co. of California, 814 F.2d 628, 631, 2
2 USPQ2d 1051, 1053 (Fed. Cir. 1987).
3 An invention is not patentable under 35 U.S.C. § 103 if it is obvious.
4 KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1745-46, 82 USPQ2d 1385, 1400
5 (2007). The facts underlying an obviousness inquiry include:
6 Under § 103, the scope and content of the prior art are to be
7 determined; differences between the prior art and the claims at
8 issue are to be ascertained; and the level of ordinary skill in the
9 pertinent art resolved. Against this background the obviousness
10 or nonobviousness of the subject matter is determined. Such
11 secondary considerations as commercial success, long felt but
12 unsolved needs, failure of others, etc., might be utilized to give
13 light to the circumstances surrounding the origin of the subject
14 matter sought to be patented.
15
16 Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). In addressing the
17 findings of fact, “[t]he combination of familiar elements according to known
18 methods is likely to be obvious when it does no more than yield predictable
19 results.” KSR at 1739, 82 USQP2d at 1395. As explained in KSR:
20 If a person of ordinary skill can implement a predictable
21 variation, §103 likely bars its patentability. For the same
22 reason, if a technique has been used to improve one device, and
23 a person of ordinary skill in the art would recognize that it
24 would improve similar devices in the same way, using the
25 technique is obvious unless its actual application is beyond his
26 or her skill. Sakraida and Anderson's-Black Rock are
27 illustrative — a court must ask whether the improvement is
28 more than the predictable use of prior art elements according to
29 their established functions.
30
31 KSR at 1740, 82 USPQ2d at 1396. As recognized in KSR, “[a] person of
32 ordinary skill is also a person of ordinary creativity, not an automaton.”
33 KSR at 1742, 82 USPQ2d at 1397.
12
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