Appeal 2007-1535
Application 10/626,969
OPINION
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). In so doing, the Examiner must make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966).
Discussing the question of obviousness of a patent that claims a
combination of known elements, KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727,
82 USPQ2d 1395 (2007) explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, §103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273, 189 USPQ 449 (1976)] and
Anderson's-Black Rock[, Inc. v. Pavement Salvage Co.,
396 U.S. 57, 163 USPQ 673 (1969)] are illustrative—a court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396. If 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.” Id., 127 S. Ct. at1740-41,
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