Appeal 2007-1870
Application 10/688,449
ordinary skill in the art. In addition to these factual determinations, the examiner
must also provide “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988, 78
USPQ2d 1329, 1336 (Fed. Cir. 2006) (cited with approval in KSR Int’l. Co. v.
Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007)). Only if this
initial burden is met does the burden of coming forward with evidence or argument
shift to the appellant. See Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. Id. at
1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
Obviousness is then determined on the basis of the evidence as a whole and the
relative persuasiveness of the arguments. See Oetiker, 977 F.2d at 1445, 24
USPQ2d at 1444; Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
The Court recently expounded on the obviousness determination in KSR,
stating:
The question is not whether the combination was obvious
to the patentee but whether the combination was obvious
to a person with ordinary skill in the art. Under the
correct analysis, 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.
KSR, 127 S. Ct. at 1742, 82 USPQ2d at 1397.
The Court further explained:
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
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: September 9, 2013