Appeal 2006-3366
Application 10/864,041
“there must be some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness.” Id., 127 S. Ct. at 1741, 82
USPQ2d at 1396 (quoting In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329,
1336 (Fed. Cir. 2006)). However, it is not necessary to look only to the
problem the patentee was trying to solve; “any need or problem known in
the field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed,” KSR,
127 S. Ct. at 1742, 82 USPQ2d at 1397 (emphasis added).
The reasoning given as support for the conclusion of obviousness can
be based on interrelated teachings of multiple patents, the effects of demands
known to the design community or present in the marketplace, and the
background knowledge possessed by a person having ordinary skill in the
art. KSR, 127 S. Ct. at 1740-41, 82 USPQ2d at 1396. See also Leapfrog,
485 F.3d at 1162, 157 82 USPQ2d at 1691 (holding it “obvious to combine
the Bevan device with the SSR to update it using modern electronic
components in order to gain the commonly understood benefits of such
adaptation, such as decreased size, increased reliability, simplified operation,
and reduced cost”).
With respect to the role of the Examiner as finder of fact, the Court of
Appeals for the Federal Circuit has stated: “the examiner bears the initial
burden, on review of the prior art or on any other ground, of presenting a
prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In rejecting claims under 35
U.S.C. § 103, it is incumbent upon the Examiner to establish a factual basis
to support the legal conclusion of obviousness. See In re Fine, 837 F.2d
1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
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