Ex Parte Addie et al - Page 12



            Appeal 2007-1722                                                                               
            Application 10/212,919                                                                         

                  Finally, Appellants argue “[t]he ‘obvious design choice’ rejection has been              
            rejected by the Federal Circuit where there is no teaching or suggestion in the                
            reference to modify its own structure in the manner of the rejected claim.” (Br. 4-            
            5.)  To the extent that Appellants argue that an explicit motivation, suggestion, or           
            teaching for the modification must be found in the applied prior art, the argument             
            has been foreclosed by KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d              
            1385 (2007).  In KSR, the Court characterized the teaching, suggestion, motivation             
            test as a “helpful insight” but found that when it is rigidly applied, it is                   
            incompatible with the Court’s precedents. KSR, 127 S. Ct. at 1741, 82 USPQ2d at                
            1396.                                                                                          
                         Helpful insights, however, need not become rigid and                              
                         mandatory formulas; and when it is so applied, the TSM                            
                         test is incompatible with our precedents. The obviousness                         
                         analysis cannot be confined by a formalistic conception                           
                         of the words teaching, suggestion, and motivation, or by                          
                         overemphasis on the importance of published articles and                          
                         the explicit content of issued patents.  KSR, 127 S. Ct. at                       
                         1741, 82 USPQ2d at 1396.                                                          
                  While there must be some articulated reasoning with some                                 
            rational underpinning to support the legal conclusion of obviousness,                          
            “the analysis need not seek out precise teachings directed to the                              
            specific subject matter of the challenged claim, for a court can take                          
            account of the inferences and creative steps that a person of ordinary                         
            skill in the art would employ.”  Id. at 1741, 82 USPQ2d at 1396.                               
            Accordingly, the application of common sense may control the                                   

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