Appeal 2007-1366
Application 90/005,090
1 considerations may also be considered to illuminate the circumstances
2 surrounding the origin of the invention. Graham, 383, U.S. at 17-18.
3 Analogous Art
4 Analogous art includes references which are in the field of the
5 applicant's endeavor or are reasonably pertinent to the problem with which
6 the inventor was concerned. In re Kahn, 441 F.3d 977, 986-87. 78 USPQ2d
7 1329, 1336 (Fed. Cir. 2006). The hypothetical person having ordinary skill
8 in the art is presumed to be aware of all prior art in the field of the invention.
9 In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1457 (Fed. Cir.
10 1998).
11 Combining Teachings
12 Obviousness may be shown from the interrelated teachings of
13 multiple patents. However, there must be a reason to combine the prior art
14 elements in the way claimed. KSR 127 S.Ct. at 1741. In other words, there
15 must be “some articulated reasoning with some rational underpinning to
16 support the legal conclusion of obviousness.” KSR, 127 S.Ct. at 1741,
17 quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed.Cir.
18 2006). However, the obviousness analysis does not require that the prior art
19 include precise teachings as to the subject matter of the claimed invention.
20 Inferences and creative steps that a person of ordinary skill in the art would
21 take may be considered. KSR, 127 S.Ct. at 1741. Under the analysis any
22 need or problem known in the field of endeavor at the time of the invention
23 and addressed by the prior art can be a basis to combine the teachings of the
24 references. KSR, 127 S.Ct. at 1741. However when the prior art teaches
25 away from combining certain known elements, discovery of a successful
26 means of combining them is more likely to be nonobvious. KSR, 127 S.Ct.
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