Appeal 2007-1269
Application 10/636,468
82 USPQ2d at 1395 (citing Graham v. John Deere Co., 383 U.S. 1, 12, 148
USPQ 459, 464 (1966) (emphasis added)), and reaffirmed principles based
on its precedent that "[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results." Id. The Court explained:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, §103 likely bars
its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 1740, 82 USPQ2d at 1396.
"To facilitate review, this [obviousness] analysis should be made
explicit." Id. at 1741, 82 USPQ2d at 1396 (citing In re Kahn, 441 F.3d 977,
988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)). However, the Court made
clear that "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.
"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." Id. at 1742, 82
USPQ2d at 1397. The Court noted that "[c]ommon sense teaches . . . that
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