Appeal 2007-1557
Application 10/943,536
combination are predictable. The Examiner must then complete the Graham
analysis by weighing any secondary considerations to determine if the claimed
invention is, in fact, obvious. This doctrine provides an alternate, though not
exclusive, analytical framework for the Examiner to assess the obviousness of a
patent claim without requiring the strict application of the teaching, suggestion,
motivation test that was rejected by KSR.
Appellant separately argues the patentability of 3, 4, 5, 6, and 13. The
remainder of the claims stands or falls with Claim 1. Appellant argues that there is
no teaching, suggestion, or motivation to combine Corio and Fangio and that, when
combined, they fail to disclose the claimed invention. However, as the Supreme
Court recently held in KSR, “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. at 1741, 82 USPQ2d at 1396.
The Examiner relies on Corio for its disclosure of the use of
electromechanical actuators as brake actuators on an aircraft that use separate
power supplies but not for a teaching of backup power supplies (Answer 3). The
Examiner reads Corio too narrowly. In fact, Corio explicitly discloses the use of a
DC battery backup for limited emergency braking when all primary power supplies
are lost (Finding of Fact 2). The Examiner relies on Fangio for a capacitive back
up power system, when he only needs to rely on the reference for the use of a
capacitor in place of the backup battery of Corio.
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