Appeal 2007-2097
Application 10/746,644
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
and Anderson's-Black Rock 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 at 1740.
A prior art reference is analyzed from the vantage point of all
that it teaches one of ordinary skill in the art. In re Lemelson, 397
F.2d 1006, 1009, (1968) (“The use of patents as references is not
limited to what the patentees describe as their own inventions or to the
problems with which they are concerned. They are part of the
literature of the art, relevant for all they contain.”). Furthermore, “[a]
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR at 1742.
On appeal, Applicants bear the burden of showing that the
Examiner has not established a legally sufficient basis for combining
the teachings of the prior art. Applicants may sustain its burden by
showing that where the Examiner relies on a combination of
disclosures, the Examiner failed to provide sufficient evidence to
show that one having ordinary skill in the art would have done what
Applicants did. United States v. Adams, 383 U.S. 39 (1966).
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