Appeal 2007-1315
Application 09/828,437
1 of the invention is then determined “against th[e] background” of the Graham
2 factors. Id. at 17-18, 148 USPQ at 467.
3 The Federal Circuit has repeatedly recognized that to establish a prima facie
4 case of obviousness, the references being combined do not need to explicitly
5 suggest combining their teachings. See e.g., Kahn, 441 F.3d at 987-88, 78
6 USPQ2d at 1336 (“the teaching, motivation, or suggestion may be implicit from
7 the prior art as a whole, rather than expressly stated in the references”); and In re
8 Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988) (“for the
9 purpose of combining references, those references need not explicitly suggest
10 combining teachings”). The court recently noted,
11 An explicit teaching that identifies and selects elements from different
12 sources and states that they should be combined in the same way as in
13 the invention at issue, is rarely found in the prior art. As precedent
14 illustrates, many factors are relevant to the motivation-to-combine
15 aspect of the obviousness inquiry, such as the field of the specific
16 invention, the subject matter of the references, the extent to which
17 they are in the same or related fields of technology, the nature of the
18 advance made by the applicant, and the maturity and congestion of the
19 field.
20 In re Johnston, 435 F.3d 1381, 1385, 77 USPQ2d 1788, 1790 (Fed. Cir. 2006).
21 The Supreme Court has provided guidelines for determining obviousness based
22 on the Graham factors. KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385
23 (2007) “[a] combination of familiar elements according to known methods is likely
24 to be obvious when it does no more than yield predictable results. Id. at 1731, 82
25 USPQ2d at 1396. “When a work is available in one field of endeavor, design
26 incentives and other market forces can prompt variations of it, either in the same
27 field or a different one. If a person of ordinary skill can implement a predictable
28 variation, §103 likely bars its patentability.” Id. For the same reason, “if a
13
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