Ex parte Jud

Informative decision only: persuasive authority, not binding precedent. When the Board reviews an obviousness rejection under 35 U.S.C. 103(a), the Graham skill-level inquiry need not be made in any prescribed format or expressly labeled, and may be established by the applicant's disclosure, the prior art references (generally entitled to great weight), and any declarations. Testimony that merely states education and work experience or that skill was "high" or "low" is typically insufficient, and an absence of an express skill-level finding is not reversible where the prior art reflects the level of skill and the appellant shows no resulting prejudice. No prior precedent directly addressed this issue in the text; the Board states that neither the statute nor the Graham factors prescribe a specific format for the skill-level determination, and cites several earlier non-binding Board decisions making the same point about education-and-experience testimony. For an examiner, the decision means an obviousness rejection can establish skill level by showing what references teach, without a separately labeled finding. For an applicant or appellant, a rehearing request that attacks only the form of the skill-level finding, without pointing to evidence supporting a materially different finding or showing an effect on the outcome, will fail. The Board relied on Graham v. John Deere Co., 383 U.S. 1 (1966), and Federal Circuit decisions such as In re Huston, Okajima v. Bourdeau, Litton Indus. Prods. v. Solid State Sys., and DyStar Textilfarben v. C.H. Patrick Co., as persuasive support for the prejudicial-error and prior-art-reflects-skill rules. LEGAL TEST OR STANDARD: Under Graham, the scope and content of the prior art, the differences between the prior art and the claims, and the level of ordinary skill in the pertinent art are determined before obviousness is assessed, with secondary considerations. No specific format is prescribed for the skill-level determination. It asks what the hypothetical person of ordinary skill would have known (and known how to do). Evidence runs from the applicant's disclosure (a floor, not a ceiling), to references, to declarations and testimony. A skill-level determination must not be at odds with what the prior art actually teaches. Absent an express finding, the question is whether prejudicial error resulted. TRIGGERING FACTS: The examiner made no expressly denominated skill-level finding but described what references (Breitler and Muggli) show a skilled person would understand. The original panel relied on the same references. The appellant on rehearing challenged only the form of the finding. It pointed to other references of record and to a Breitler declaration without explaining how they would change the skill-level finding. It urged no alternative finding and did not argue that the obviousness determination was wrong on the merits. KEY QUOTE: "The skill-level determination is an important guarantee of objectivity in an obviousness analysis." (slip op. at 3) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board follows Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966), and notes that earlier non-binding Board decisions (Univ. of California v. Children's Medical Center Corp., 79 USPQ2d 1029; Scripps Research Inst. v. Nemerson, 78 USPQ2d 1019; Argyropoulos v. Swamp, 56 USPQ2d 1795) made the same point about education and experience testimony. PRACTICE TIP: Do not rest an appeal or rehearing request on the lack of an expressly labeled skill-level finding. Identify specific evidence (references, disclosure, fact-based declarations) supporting a materially different skill level, and show how that level would change the obviousness result. Declarations should address what a skilled person would have known, not just education, experience, or whether skill was high.