Appeal No. 2007-1530
Application 10/095,112
KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396. Where the claimed subject matter
cannot be fairly characterized as involving the simple substitution of one known
element for another or the mere application of a known technique to a piece of
prior art ready for the improvement, a holding of obviousness can be based on a
showing that there was “an apparent reason to combine the known elements in the
fashion claimed.” KSR, 127 S. Ct. at 1740-41, 82 USPQ2d at 1396. Such a
showing requires “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)).6
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 Dystar, 464 F.3d at 1368, 80 USPQ2d at
1651 (“[A]n implicit motivation to combine exists not only when a suggestion may
be gleaned from the prior art as a whole, but when the “improvement” is
technology-independent and the combination of references results in a product or
6 Although KSR also held that this reasoning is not limited to the problem
the patentee was trying to solve, 127 S. Ct. at 1742, 82 USPQ2d at 1397(“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”), the rejection before us is based on solving the same problems that faced
Appellants.
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