Appeal 2007-1204 Application 10/370,869 many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle. KSR, 127 S. Ct. at 1742, 82 USPQ2d at 1397 (finding that during an obviousness determination, the person of ordinary skill’s attempt to solve a problem is not limited to only those elements of the prior art designed to solve the same problem). [T]he problem motivating the patentee may be only one of many addressed by the patent's subject matter. The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art. Under the correct analysis, 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. 1727 at 1742, 82 USPQ2d at 139. The analogous-art test requires that the Board show that a reference is either in the field of the applicant's endeavor or is reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). References are selected as being reasonably pertinent to the problem based on the judgment of a person having ordinary skill in the art. Id. (“[I]t is necessary to consider ‘the reality of the circumstances,’-in other words, common sense-in deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor.” Id. (quoting In re Wood, 599 F.2d 1032, 1036 (C.C.P.A.1979))). 6Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: September 9, 2013