Appeal 2007-1340
Application 09/996,125
of prior art elements according to their established functions." Id. at 1740,
82 USPQ2d at 1396.
The Supreme Court made clear that:
[f]ollowing these principles may be more difficult
in other cases than it is here because the claimed
subject matter may involve more than the simple
substitution of one known element for another or
the mere application of a known technique to a
piece of prior art ready for the improvement.
KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396. The Court explained that:
[o]ften, it will be necessary . . . 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.
Id. at 1740-41, 82 USPQ2d at 1396. The Court noted that "[t]o facilitate
review, this 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) ("[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness")). However, "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
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