Appeal 2007-0561
Application 10/689,465
1 presumed to have skills apart from what the prior art references explicitly say. See
2 In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985). A person of
3 ordinary skill is also a person of ordinary creativity, not an automaton. KSR
4 International Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742, 82 USPQ2d 1385, 1397
5 (2007). Rigid rules that deny factfinders recourse to common sense are neither
6 necessary nor consistent with case law. Id. In considering suggestion from the
7 prior art for determining obviousness, the proper approach is quite flexible and
8 requires consideration of common knowledge and common sense. DyStar
9 Textilfarben GmbH & Co. Deutschland KG v. C. H. Patrick Co., 464 F.3d 1356,
10 1367, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006).
11 An invention may be obvious for reasons the inventor did not contemplate,
12 because applicable prior art need not address the same problem as that faced by an
13 applicant for patent. In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901-02
14 (Fed. Cir. 1990) (en banc), cert. denied, 111 S. Ct. 1682. A prior art reference is
15 from an analogous art and proper for consideration if it is reasonably pertinent to
16 the particular problem with which the inventor is involved. In re Deminski, 796
17 F.2d 436, 442, 230 USPQ 313, 315 (Fed. Cir. 1986).
18 F. Analysis
19 While the applicants’ brief cites extensively to the Manual of Patent
20 Examining Procedure for substantive law on obviousness, the manual does not
21 have the force and effect of law. The applicable law comes from statutes,
22 precedents of our reviewing court, and decisions of the U.S. Supreme Court.
23 The applicants argue that for reaching a conclusion for obviousness the
24 Court of Appeals for the Federal Circuit has consistently required a specific
25 teaching, motivation, or suggestion to combine the teachings of individual items of
26 prior art. That is a true statement. But even more enlightening is the Supreme
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