Appeal 2007-1992
Application 09/318,447
obvious to a person having ordinary skill in the art to include in
Joseph/Teper … the client identifier identifying account information
previously supplied by a user of the client system wherein the user does not
need to log into the server system when ordering the item.”
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734, 82 USPQ2d 1385, 1391 (2007). The question of obviousness is
resolved on the basis of underlying factual determinations including (1) the
scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, and (3) the level of skill in the art. Graham
v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). Emphasis
added. See also KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391 (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”) The Court in
Graham further noted that evidence of secondary considerations “might be
utilized to give light to the circumstances surrounding the origin of the
subject matter sought to be patented.” 383 U.S. at 18, 148 USPQ at 467.
In particular, the Supreme Court emphasized that “the principles laid
down in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11
How. 248.” KSR, 127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing Graham,
383 U.S. at 12, 148 USPQ at 464 (emphasis added)), and reaffirmed
principles based on its precedent that “[t]he combination of familiar
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