Appeal 2007-1118
Application 10/237,089
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
KSR Int'l. Co. v. Teleflex Inc., 127 S. Ct. 1727 at 1742, 82 USPQ2d at 1397.
In determining that there was a reason to combine the teachings of the
cited references, the Examiner properly took into account the interrelated
teachings of the prior art references, the effects of the demands on those in
the lithium ion secondary battery art to improve cycle retention and charging
speed, and the background knowledge of the ordinary artisan as evidenced
by the references. See KSR Int’l. v. Teleflex Inc., 127 S.Ct. 1727, 1740-41,
82 USPQ2d 1385, 1396 (2007) (“Often, 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.”).
We now turn to the second question of whether Appellants have
overcome the rejection by rebutting the prima facie case with sufficient
evidence of unexpected results.
Once a prima facie case of obviousness is established, the burden of
coming forward with evidence and argument in rebuttal is shifted to
appellants. See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984). Rebuttal may take the form of “a comparison of test data
showing that the claimed compositions possess unexpectedly improved
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