Appeal 2007-0958
Application 10/807,935
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” Id. at 1739-40, 82 USPQ2d at
1395. “Sakraida and Anderson’s-Black Rock are illustrative – a court must
ask whether the improvement is more that the predictable use of prior art
elements according to their established function.” Id. at 1740, 82 USPQ2d
at 1395.
The Supreme Court stated that “[f]ollowing these principles may be
more difficult in other cases than it is here because the claimed subject
matter may involve more than 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.” Id. The Court explained, “[o]ften, it will be
necessary for a court to look to 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, 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.
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