Appeal 2007-0025 Page 15
Application 09/792,151
prior art elements according to their established functions.” Id.
The Supreme Court made clear that that “[f]ollowing these principles may
be more difficult in other cases than it is here because the claimed subject matter
may involve more than the simple substitution of one known element for another
or the mere application of a known technique to a piece of prior art ready for the
improvement.” Id. The Court explained, “[o]ften, it will be necessary for a court to
look to interrelated teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the art, all in order to
determine whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue.” Id. at 1740-41, 82 USPQ2d at 1396.
The Court noted that “[t]o facilitate review, this analysis should be made explicit.”
Id., 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.
D. Analysis
Appellants argue that three claimed steps are not disclosed in the cited
references: (1) “broadcasting via said broadcast server advertising information that
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