Appeal 2007-0781
Application 10/003,150
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.
We have established that the difference between what Garfinkle
discloses and the claimed subject matter is that the claimed method includes
a network-based printing service retrieving a scaled-down version of a full-
sized document to be printed from at least one store via a network and a
printing service determining printing costs for printing the full-sized
document based upon attributes of the scaled-down version.
However, printers retrieving scaled-down versions of a full-sized
document over a network are well known. Printers that print full size
documents over a network are well known, as are printers which can print
scaled-down versions of full-sized documents.
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