Appeal 2007-0205
Application 09/812,302
matter can be proved obvious is by noting that there existed at the time of
invention a known problem for which there was an obvious solution
encompassed by the patent's claims.” KSR, 127 S. Ct. at 1742, 82 USPQ2d
at 1397.
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.
The Examiner can satisfy this burden by showing some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness. KSR, 127 S. Ct. at 1741, 82 USPQ2d at 1396 (citing Kahn,
441 F.3d at 988, 78 USPQ2d at 1336).
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