Appeal 2007-1537
Application 09/916,903
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. See also 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”).
With respect to the role of the Examiner as finder of fact, the Court of
Appeals for the Federal Circuit has stated: “the examiner bears the initial
burden, on review of the prior art or on any other ground, of presenting a
prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In rejecting claims under 35
U.S.C. § 103, it is incumbent upon the Examiner to establish a factual basis
to support the legal conclusion of obviousness. See In re Fine, 837 F.2d
1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
Examiner must make the factual determinations set forth in Graham v. John
Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). Furthermore,
“‘there must be some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness’ . . . . [H]owever, 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.” KSR,
127 S. Ct. at 1741, 82 USPQ2d at 1396 (quoting In re Kahn, 441 F.3d at
988, 78 USPQ2d at 1336). Further, as pointed out by our reviewing court,
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