Appeal 2007-1229
Application 10/325,333
1 Id. at 1740, 82 USPQ2d at 1396. The operative question in this “functional
2 approach” is thus “whether the improvement is more than the predictable use
3 of prior art elements according to their established functions.” Id.
4 The Supreme Court made clear that
5 [f]ollowing these principles may be more difficult in other cases than
6 it is here because the claimed subject matter may involve more than
7 the simple substitution of one known element for another or the mere
8 application of a known technique to a piece of prior art ready for the
9 improvement.
10
11 Id. The Court explained,
12 [o]ften, it will be necessary for a court to look to interrelated teachings
13 of multiple patents; the effects of demands known to the design
14 community or present in the marketplace; and the background
15 knowledge possessed by a person having ordinary skill in the art, all
16 in order to determine whether there was an apparent reason to
17 combine the known elements in the fashion claimed by the patent at
18 issue.
19
20 Id. at 1740-41, 82 USPQ2d at 1396. The Court noted that “[t]o facilitate
21 review, this analysis should be made explicit. Id. (citing In re Kahn, 441
22 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)) (“[R]ejections on
23 obviousness grounds cannot be sustained by mere conclusory statements;
24 instead, there must be some articulated reasoning with some rational
25 underpinning to support the legal conclusion of obviousness”). However,
26 “the analysis need not seek out precise teachings directed to the specific
27 subject matter of the challenged claim, for a court can take account of the
28 inferences and creative steps that a person of ordinary skill in the art would
29 employ.” Id. at 1741, 82 USPQ2d at 1396. The Supreme Court’s opinion in
30 United States v. Adams, 383 U.S. 39, 40, 148 USPQ 479, 480 (1966) is
12
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