Appeal 2007-1412
Application 09/822,152
the origin of the subject matter sought to be patented. As
indicia of obviousness or nonobviousness, these inquiries may
have relevancy.
Where the claimed subject matter involves 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, a holding of
obviousness must be based on “an apparent reason to combine the known
elements in the fashion claimed.” KSR Int’l v. Teleflex, Inc., 127 S. Ct.
1727, 1740-41, 82 USPQ2d 1385, 1396 (2007). That is, “there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” Id., 127 S. Ct. at 1741, 82 USPQ2d at
1396 (quoting In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed.
Cir. 2006)). Such reasoning can be based on 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. KSR, 127 S. Ct. at 1740-41, 82
USPQ2d at 1396.
2. OBVIOUSNESS (Teaching away/Expectation of success)
The determination of obviousness must consider, inter alia, whether a
person of ordinary skill in the art would have been motivated to combine the
prior art to achieve the claimed invention and whether there would have
been a reasonable expectation of success in doing so. Brown & Williamson
Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1124 [56 USPQ2d
1456,1458-59] (Fed. Cir. 2000). Medichem S.A. v. Rolabo S.L., 437 F.3d
8
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