[103] Graham factors & KSR

MPEP 2141

Graham (1966)

• (A) Determining the scope and content of the prior art;
• (B) Ascertaining the differences between the claimed invention and the prior art; and
• (C) Resolving the level of ordinary skill in the pertinent art.

Once the Graham factual inquiries are resolved, Office personnel must determine whether the claimed invention would have been obvious to one of ordinary skill in the art.

KSR
The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that “‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:

• (A) Combining prior art elements according to known methods to yield predictable results;
• (B) Simple substitution of one known element for another to obtain predictable results;
• (C) Use of known technique to improve similar devices (methods, or products) in the same way;
• (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
• (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
• (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
• (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.