Appeal 2007-1755
Application 10/930,047
involve more than 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.” Id. The Court explained, “[o]ften, it will be necessary for a court
to look to 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, all in order to
determine whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue.” Id. at 1740-41, 82 USPQ2d at 1396.
The Court noted that “[t]o facilitate review, this analysis should be made explicit.”
Id., citing In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”). However, “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.
The use of hindsight knowledge to support an obviousness rejection under
35 U.S.C. § 103 is impermissible. See, e.g., KSR, 127 S.Ct. at 1742, 82 USPQ2d at
1397 (“A factfinder should be aware, of course, of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”)
(citing Graham, 383 U.S. at 36). However, obviousness judgments are necessarily
based on hindsight, but so long as judgment takes into account only knowledge
known in the art, there is no impermissible use of hindsight. In re McLaughlin,
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013