Appeal 2007-1204
Application 10/370,869
many cases a person of ordinary skill will be able to fit
the teachings of multiple patents together like pieces of a
puzzle.
KSR, 127 S. Ct. at 1742, 82 USPQ2d at 1397 (finding that during an
obviousness determination, the person of ordinary skill’s attempt to
solve a problem is not limited to only those elements of the prior art
designed to solve the same problem).
[T]he problem motivating the patentee may be only one
of many addressed by the patent's subject matter. The
question is not whether the combination was obvious to
the patentee but whether the combination was obvious to
a person with ordinary skill in the art. Under the correct
analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements
in the manner claimed.
KSR, 127 S. Ct. 1727 at 1742, 82 USPQ2d at 139.
The analogous-art test requires that the Board show that a
reference is either in the field of the applicant's endeavor
or is reasonably pertinent to the problem with which the
inventor was concerned in order to rely on that reference
as a basis for rejection. In re Oetiker, 977 F.2d 1443,
1447 (Fed. Cir. 1992). References are selected as being
reasonably pertinent to the problem based on the
judgment of a person having ordinary skill in the art. Id.
(“[I]t is necessary to consider ‘the reality of the
circumstances,’-in other words, common sense-in
deciding in which fields a person of ordinary skill would
reasonably be expected to look for a solution to the
problem facing the inventor.” Id. (quoting In re Wood,
599 F.2d 1032, 1036 (C.C.P.A.1979))).
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