Ex Parte Fukuoka et al - Page 9

                Appeal 2007-1118                                                                             
                Application 10/237,089                                                                       

                      solutions, a person of ordinary skill has good reason to pursue                        
                      the known options within his or her technical grasp.  If this                          
                      leads to the anticipated success, it is likely the product not of                      
                      innovation but of ordinary skill and common sense.  In that                            
                      instance the fact that a combination was obvious to try might                          
                      show that it was obvious under § 103.                                                  
                KSR Int'l. Co. v. Teleflex Inc., 127 S. Ct. 1727 at 1742, 82 USPQ2d at 1397.                 
                      In determining that there was a reason to combine the teachings of the                 
                cited references, the Examiner properly took into account the interrelated                   
                teachings of the prior art references, the effects of the demands on those in                
                the lithium ion secondary battery art to improve cycle retention and charging                
                speed, and the background knowledge of the ordinary artisan as evidenced                     
                by the references.  See KSR Int’l. v. Teleflex Inc., 127 S.Ct. 1727, 1740-41,                
                82 USPQ2d 1385, 1396 (2007) (“Often, it will be necessary for a court to                     
                look to 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, all in order to determine whether there was an apparent reason to                       
                combine the known elements in the fashion claimed by the patent at issue.”).                 
                      We now turn to the second question of whether Appellants have                          
                overcome the rejection by rebutting the prima facie case with sufficient                     
                evidence of unexpected results.                                                              
                      Once a prima facie case of obviousness is established, the burden of                   
                coming forward with evidence and argument in rebuttal is shifted to                          
                appellants.  See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788                      
                (Fed. Cir. 1984).  Rebuttal may take the form of “a comparison of test data                  
                showing that the claimed compositions possess unexpectedly improved                          

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