Ex Parte Mears et al - Page 9

                Appeal 2007-0399                                                                                
                Application 09/961,024                                                                          
                       an implicit motivation to combine exists not only when a suggestion                      
                       may be gleaned from the prior art as a whole, but when the                               
                       ‘improvement’ is technology-independent and the combination of                           
                       references results in a product or process that is more desirable, for                   
                       example because it is stronger, cheaper, cleaner, faster, lighter,                       
                       smaller, more durable, or more efficient … In such situations, the                       
                       proper question is whether the ordinary artisan possesses knowledge                      
                       and skills rendering him capable of combining the prior art                              
                       references.                                                                              
                DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464                          
                F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006) (emphasis in                             
                original).                                                                                      
                       References within the statutory terms of 35 U.S.C. § 103 qualify as                      
                prior art for an obviousness determination only when analogous to the                           
                claimed invention.  In re Clay, 966 F.2d 656, 658, 23 USPQ2d 1058, 1060                         
                (Fed. Cir. 1992).  Two separate tests define the scope of analogous prior art:                  
                (1) whether the art is from the same field of endeavor, regardless of the                       
                problem addressed and, (2) if the reference is not within the field of the                      
                inventor's endeavor, whether the reference still is reasonably pertinent to the                 
                particular problem with which the inventor is involved.  In re Deminski, 796                    
                F.2d 436, 442, 230 USPQ 313, 315 (Fed. Cir. 1986); see also In re Wood,                         
                599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979) and In re Bigio,                             
                381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004).                                     
                Furthermore, “‘there must be some articulated reasoning with some rational                      
                underpinning to support the legal conclusion of obviousness’ . . . [H]owever,                   
                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                  


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