Appeal 2007-1305
Application 09/725,394
1 The Federal Circuit has repeatedly recognized that to establish a prima facie
2 case of obviousness, the references being combined do not need to explicitly
3 suggest combining their teachings. See e.g., Kahn, 441 F.3d at 987-88, 78
4 USPQ2d at 1336 (“the teaching, motivation, or suggestion may be implicit from
5 the prior art as a whole, rather than expressly stated in the references”); and In re
6 Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988) (“for the
7 purpose of combining references, those references need not explicitly suggest
8 combining teachings”). The court recently noted,
9 An explicit teaching that identifies and selects elements from different
10 sources and states that they should be combined in the same way as in
11 the invention at issue, is rarely found in the prior art. As precedent
12 illustrates, many factors are relevant to the motivation-to-combine
13 aspect of the obviousness inquiry, such as the field of the specific
14 invention, the subject matter of the references, the extent to which
15 they are in the same or related fields of technology, the nature of the
16 advance made by the applicant, and the maturity and congestion of the field.
17
17 In re Johnston, 435 F.3d 1381, 1385, 77 USPQ2d 1788, 1790 (Fed. Cir. 2006).
18
19
20 The Supreme Court has recently provided guidelines for determining
21 obviousness based on the Graham factors. KSR Int’l v. Teleflex Inc., 127 S. Ct.
22 1727, 82 USPQ2d 1385 (2007). The Court stated that “[a] combination of familiar
23 elements according to known methods is likely to be obvious when it does no more
24 than yield predictable results. Id. at 1731, 82 USPQ2d at 1396. “When a work is
25 available in one field of endeavor, design incentives and other market forces can
26 prompt variations of it, either in the same field or a different one. If a person of
27 ordinary skill can implement a predictable variation, §103 likely bars its
28 patentability.” Id. For the same reason, “if a technique has been used to improve
29 one device, and a person of ordinary skill in the art would recognize that it would
10
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