Appeal 2007-0003
Application 10/217,990
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations. Graham v.
John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). “[A]nalysis
[of whether the subject matter of a claim is obvious] 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.” KSR Int’l v. Teleflex, Inc.,
127 S. Ct. 1727, 1740-41, 82 USPQ2d 1385, 1396 (2007) quoting In re
Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006); see also
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1361, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006) (“The motivation
need not be found in the references sought to be combined, but may be
found in any number of sources, including common knowledge, the prior art
as a whole, or the nature of the problem itself.”); In re Bozek, 416 F.2d 1385,
1390, 163 USPQ 545, 549 (CCPA 1969) (“Having established that this
knowledge was in the art, the examiner could then properly rely, as put forth
by the solicitor, on a conclusion of obviousness ‘from common knowledge
and common sense of the person of ordinary skill in the art without any
specific hint or suggestion in a particular reference.’”); In re Hoeschele, 406
F.2d 1403, 1406-07, 160 USPQ 809, 811-812 (CCPA 1969) (“[I]t is proper
to take into account not only specific teachings of the references but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom . . . .”). The analysis supporting obviousness, however, should be
made explicit and should “identify a reason that would have prompted a
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