Appeal 2007-0820
Application 09/734,808
1 necessary for a court to look to interrelated teachings of multiple patents; the
2 effects of demands known to the design community or present in the
3 marketplace; and the background knowledge possessed by a person having
4 ordinary skill in the art, all in order to determine whether there was an
5 apparent reason to combine the known elements in the fashion claimed by
6 the patent at issue.” Id. at 1740-41, 82 USPQ2d at 1396. The Court noted
7 that “[t]o facilitate review, this analysis should be made explicit. Id. (citing
8 In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006))
9 (“[R]ejections on obviousness grounds cannot be sustained by mere
10 conclusory statements; instead, there must be some articulated reasoning
11 with some rational underpinning to support the legal conclusion of
12 obviousness”). However, “the analysis need not seek out precise teachings
13 directed to the specific subject matter of the challenged claim, for a court can
14 take account of the inferences and creative steps that a person of ordinary
15 skill in the art would employ.” Id. at 1741, 82 USPQ2d at 1396.
16 The Supreme Court’s opinion in United States v. Adams, 383 U.S. 39,
17 40, 148 USPQ 479, 480 (1966) is illustrative of the “functional approach” to
18 be taken in cases where the claimed invention is a prior art structure altered
19 by substituting one element in the structure for another known element.
20 KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391. “The Court [in Adams]
21 recognized that when a patent claims a structure already known in the prior
22 art that is altered by the mere substitution of one element for another known
23 in the field, the combination must do more than yield a predictable result.
24 383 U.S., at 50-51.” Id. Ultimately the Adams Court found the combination
25 at issue not obvious to those skilled in the art because, although the elements
26 were known in the prior art, they worked together in an unexpected manner.
11
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