Appeal 2007-1541
Application 10/334,695
devices”). In reaching that conclusion, the Federal Circuit recognized that
“[a]n obviousness determination is not the result of a rigid formula
disassociated from the consideration of the facts of a case. Indeed, the
common sense of those skilled in the art demonstrates why some
combinations would have been obvious where others would not.” Id. at
1161, 82 USPQ2d at 1690-91 (citing KSR, 127 S. Ct. 1727, 1739, 82
USPQ2d 1385, 1395 (2007) (“The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.”). The Federal Circuit relied in part on the
fact that Leapfrog had presented no evidence that the inclusion of a reader in
the combined device was “uniquely challenging or difficult for one of
ordinary skill in the art” or “represented an unobvious step over the prior
art.” Id. (citing KSR, 127 S. Ct. at 1740-41, 82 USPQ2d at 1396).
The determination of obviousness must consider, inter alia, whether a
person of ordinary skill in the art would have been motivated to combine the
prior art to achieve the claimed invention and whether there would have
been a reasonable expectation of success in doing so. Brown & Williamson
Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1124, 56 USPQ2d
1456, 1458-59 (Fed. Cir. 2000). Medichem S.A. v. Rolabo S.L., 437 F.3d
1157, 1164, 77, USPQ2d 1865, 1869 (Fed. Cir. 2006). Where the teachings
of two or more prior art references conflict, the examiner must weigh the
power of each reference to suggest solutions to one of ordinary skill in the
art, considering the degree to which one reference might accurately discredit
another. In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir.
1991). If the proposed modification would render the prior art invention
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