Appeal 2007-2223
Application 09/975,168
PRINCIPLES OF LAW
To reach a conclusion of obviousness under § 103, the
Examiner bears the burden of producing factual basis supported by
teaching in a prior art reference or shown to be common knowledge of
unquestionable demonstration. Our reviewing court requires this
evidence in order to establish a prima facie case. In re Piasecki, 745
F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984).
Furthermore, the test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary skill in the art.
See In re Kahn, 441 F.3d 977, 987-988, 78 USPQ2d 1329, 1336 (Fed. Cir.
2006), In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir.
1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734, 82 USPQ2d 1385, 1391 (2007).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161,
82 USPQ2d 1687, 1691 (Fed. Cir. 2007) (quoting KSR, 127 S. Ct. at 1739-
40, 82 USPQ2d at 1395). “One of the ways in which a patent's subject
matter can be proved obvious is by noting that there existed at the time of
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