Appeal 2007-1417
Application 09/877,536
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
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
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