Appeal 2006-2827
Application 09/883,893
skill in the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See
also KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors continue
to define the inquiry that controls.”). The Court noted that “[t]o facilitate review,
this analysis should be made explicit.” KSR, 127 S.Ct. at 1740-41, 82 USPQ2d at
1396. (citing In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness”)).
However, “the analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” Id.
A factfinder should be aware, of course, of the distortion
caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning. See Graham,
383 U.S. at 36, 86 S.Ct. 684 (warning against a
“temptation to read into the prior art the teachings of the
invention in issue” and instructing courts to “ ‘guard
against slipping into the use of hindsight’ ” (quoting
Monroe Auto Equipment Co. v. Heckethorn Mfg. &
Supply Co., 332 F.2d 406, 412 (C.A.6 1964))).
KSR, 127 S.Ct. at 1742, 82 USPQ2d at 1397.
In KSR, the Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” id. at 1739, 82
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