Appeal 2006-2293
Application 10/471,932
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See
also In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984). It is incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the examiner is
expected to make the factual determinations set forth in Graham v. John
Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966), viz., (1) the scope
and content of the prior art; (2) the differences between the prior art and the
claims at issue; and (3) the level of 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. 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.
Where the proposed modification would render the prior art invention
being modified unsatisfactory for its intended purpose, the proposed
modification would not have been obvious. See Tec Air Inc. v. Denso Mfg.
Michigan Inc., 192 F.3d 1353, 1360, 52 USPQ2d 1294, 1298 (Fed. Cir.
1999); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984).
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