Appeal 2007-0463
Application 09/896,537
obvious unless its actual application is beyond his or her skill.
Sakraida [v. AG Pro, Inc., 425 U.S. 273, 189 USPQ 449 (1976)] and
Anderson's-Black Rock[, Inc. v. Pavement Salvage Co., 396 U.S. 57,
163 USPQ 673 (1969)] are illustrative—a court must ask whether the
improvement is more than the predictable use of prior art elements
according to their established functions.
KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396. If the claimed subject matter cannot
be fairly characterized as involving 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, a holding of obviousness can be based on a showing
that there was “an apparent reason to combine the known elements in the fashion
claimed.” KSR, 127 S. Ct. at 1740-41, 82 USPQ2d at 1396. In other words, “there
must be some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” Id., 127 S. Ct. at 1741, 82 USPQ2d at 1396
(quoting In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)).
However, this reasoning is not limited to the problem the patentee was trying to
solve; “any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining the
elements in the manner claimed,” KSR, 127 S. Ct. at 1742, 82 USPQ2d at 1397
(emphasis added).
The reasoning given as support for a conclusion of obviousness can be based
on 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. KSR, 127 S. Ct. at 1740-41,
82 USPQ2d at 1396. See also Leapfrog, 485 F.3d at 1162, 157 82 USPQ2d at
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