Appeal No. 2007-1530
Application 10/095,112
process that is more desirable, for example because it is stronger, cheaper, cleaner,
faster, lighter, smaller, more durable, or more efficient. Because the desire to
enhance commercial opportunities by improving a product or process is
universal—and even common-sensical—we have held that there exists in these
situations a motivation to combine prior art references even absent any hint of
suggestion in the references themselves. In such situations, the proper question is
whether the ordinary artisan possesses knowledge and skills rendering him capable
of combining the prior art references.”); Leapfrog, 485 F.3d at 1162, 82 USPQ2d
at 1691 (holding it “obvious to combine the Bevan device with the SSR to update it
using modern electronic components in order to gain the commonly understood
benefits of such adaptation, such as decreased size, increased reliability, simplified
operation, and reduced cost”).
Also, a reference may suggest a solution to a problem it was not designed to
solve and thus does not discuss. KSR, 137 S. Ct. at 1742, 82 USPQ2d at 1397
(“Common 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. . . . A person
of ordinary skill is also a person of ordinary creativity, not an automaton.”).
The prior art relied on to prove obviousness must be analogous art. As
explained in Kahn,
the “analogous-art” test . . . has long been part of the primary Graham
analysis articulated by the Supreme Court. See Dann [v. Johnston,]
425 U.S. [219,] 227-29 [189 USPQ 257] (1976), Graham, 383 U.S.
at 35. The analogous-art test requires that the Board show that a
15
Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Next
Last modified: September 9, 2013