Appeal 2007-1340
Application 09/996,125
ordinary skill in the art would employ." Id. The Court cautioned that "[a]
factfinder should be aware, of course, of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning." Id.
at 1742, 82 USPQ2d at 1397.
The Court noted that "[i]n many fields it may be that there is little
discussion of obvious techniques or combinations, and it often may be the
case that market demand, rather than scientific literature, will drive design
trends." KSR, 127 S. Ct. at 1741, 82 USPQ2d at 1396. "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 1741, 82 USPQ2d at 1397. The
Court also noted that "[c]ommon sense teaches . . . that familiar items may
have obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle." Id. at 1742, 82 USPQ2d at 1397. "A
person of ordinary skill is also a person of ordinary creativity, not an
automaton." Id.
Furthermore, the Supreme Court explained that "[w]hen there is a
design need or market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp."
KSR, 127 S. Ct. at 1742, 82 USPQ2d at 1397. "If this leads to the
anticipated success, it is likely the product not of innovation but of ordinary
skill and common sense," id. and, in such an instance "the fact that a
combination was obvious to try might show that it was obvious under § 103"
id.
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