Appeal 2006-3342
Application 10/195,217
1 familiar elements according to known methods is likely to be obvious when
2 it does no more than yield predictable results.” KSR, 127 S.Ct. at 1739, 82
3 USPQ2d at 1395. As explained in KSR: If a person of ordinary skill can
4 implement a predictable variation, § 103 likely bars its patentability. For the
5 same reason, if a technique has been used to improve one device, and a
6 person of ordinary skill in the art would recognize that it would improve
7 similar devices in the same way, using the technique is obvious unless its
8 actual application is beyond his or her skill. Sakraida and Anderson's-Black
9 Rock is illustrative - a court must ask whether the improvement is more than
10 the predictable use of prior art elements according to their established
11 functions. KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1395.
12 A prior art reference is analyzed from the vantage point of all that it
13 teaches one of ordinary skill in the art. In re Lemelson, 397 F.2d 1006, 1009,
14 158 USPQ 276, 277 (1968)(“The use of patents as references is not limited
15 to what the patentees describe as their own inventions or to the problems
16 with which they are concerned. They are part of the literature of the art,
17 relevant for all they contain”). Furthermore, “[a] person of ordinary skill is
18 also a person of ordinary creativity, not an automaton.” KSR, 127 S.Ct. at
19 1742, 82 USPQ2d at 1397.
20 On appeal, Applicants bear the burden of showing that the Examiner
21 has not established a legally sufficient basis for combining the teachings of
22 the prior art. Applicants may sustain their burden by showing that where the
23 Examiner relies on a combination of disclosures, the Examiner failed to
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