Appeal 2007-3126
Application 10/359,275
Black Rock[, Inc. v. Pavement Salvage Co., 396 U.S. 57, (1969)] 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, 127 S. Ct. at 1740. If the claimed subject matter cannot be fairly
characterized as “involv[ing] 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., a holding of obviousness can be based on “on
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,” id. at 1740-41, provided
there was “an apparent reason to combine the known elements in the fashion
claimed.” Id. “To facilitate review, this analysis should be made explicit.” Id. at
1741. That is, “there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” Id. (quoting Kahn,
441 F.3d at 987). See also PharmaStem Therapeutics Inc. v. Viacell Inc., 491 F3d
1342, 1360 (Fed. Cir. 2007) (proponent of obviousness based on a combination of
references must show “that a person of ordinary skill in the art would have had
reason to attempt to make the composition or device, or carry out the claimed
process, and would have had a reasonable expectation of success in doing so.”)
(citations omitted).
The motivation for combining reference teachings is not limited to the
problem the patentee was trying to solve: “any need or problem known in the field
of endeavor at the time of invention and addressed by the patent can provide a
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