Appeal 2007-1537
Application 09/916,903
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273, 189 USPQ 449 (1976)] and
Anderson's-Black Rock [Inc. v. Pavement Salvage Co., 396 U.S.
57, 163 USPQ 673 (1969)] are illustrative—a court must ask
whether the improvement is more than the predictable use of
prior art elements according to their established functions.
KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396. Where, on the other hand, 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, 127 S. Ct. at 1740-41, 82 USPQ2d at 1396. 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, 988, 78 USPQ2d 1329,
1336 (Fed. Cir. 2006)). However, it is not necessary to look only to the
problem the patentee was trying to solve; “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,” KSR,
127 S. Ct. at 1742, 82 USPQ2d at 1397 (emphasis added).
The reasoning given as support for the conclusion of obviousness can
be based on interrelated teachings of multiple patents, the effects of demands
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