Appeal 2007-3202
Application 10/145,987
rejections are based on combinations of references. In re Keller, 642 F.2d at
426, 208 USPQ at 882.
Motivation to combine teachings need not be expressly stated in
any prior art reference. In re Kahn, 441 F.3d at 989, 78 USPQ2d at
1338; see also In re Nilssen, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988).
There need only be an articulated reasoning with rational
underpinnings to support a motivation to combine teachings. In re
Kahn, 441 F.3d at 988, 78 USPQ2d at 1337.
As the Supreme Court has stated in KSR International Co.,
127 S. Ct. at 1741, 82 USPQ2d at 1396: “Under the correct
[obviousness] analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the [applicant] can
provide a reason for combining the elements in the manner claimed.”
Note also that in KSR International Co., 127 S. Ct. at 1742, 82
USPQ2d at 1397, with regard to motivation to combine teachings, the
Supreme Court stated: “Rigid preventive rules that deny fact finders
recourse to common sense, however, are neither necessary under our
case law nor consistent with it.” A person of ordinary skill in the art
is also a person of ordinary creativity, not an automaton. Id.
“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 127 S. Ct. at 1739, 82 USPQ2d at 1395. If
a technique has been used to improve one device, e.g., protecting the
recording medium from damage caused by flux leakage from the
magneto-resistive element, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same
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