Appeal 2007-0844
Application 10/790,473
a person of ordinary skill in the art. When claim elements are found in more
than one prior art reference, the fact finder must determine “whether a
person of ordinary skill in the art, possessed with the understandings and
knowledge reflected in the prior art, and motivated by the general problem
facing the inventor, would have been led to make the combination recited in
the claims.” In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1337 (Fed.
Cir. 2006). With respect to the role of the Examiner as finder of fact, the
Court of Appeals for the Federal Circuit has stated: “the examiner bears the
initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The Court of Appeals
for the Federal Circuit has also noted: “[w]hat the prior art teaches, whether
it teaches away from the claimed invention, and whether it motivates a
combination of teachings from different references are questions of fact.” In
re Fulton, 391 F.3d 1195, 1199-1200, 73 USPQ2d 1141, 1144 (Fed. Cir.
2004) (internal citations omitted). In rejecting claims under 35 U.S.C.
§ 103, it is incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the Examiner
must make the factual determinations set forth in Graham v. John Deere
Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). 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 employ.” KSR Int’l v.
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