Appeal 2007-1570
Application 10/646,720
post reasoning.” KSR, 127 S. Ct. at 1742, 82 USPQ2d at 1397. See also
Graham v. John Deere Co., 383 U.S. 1, 36, 148 USPQ 459, 474 (1966).
Nevertheless, in KSR the Supreme Court also qualified the issue of hindsight
by stating that “[r]igid preventative rules that deny factfinders recourse to
common sense, however, are neither necessary under our case law nor
consistent with it.” KSR, 127 S. Ct. at 1742-43, 82 USPQ2d at 1397.
Here, we do not agree with Appellant’s assertion that the Examiner
has impermissibly relied upon hindsight in formulating the rejection. After
carefully considering all of the evidence before us, we find the Examiner has
pointed to specific portions of Carraras, Zumback, and Nemeth, respectively,
as providing motivation that reasonably supports the legal conclusion of
obviousness (see Answer 4, 5, and 6).
Regarding Appellant’s third argument that the applied references do
not solve the same problem presented by the inventor, we note the Supreme
Court stated in KSR that any need or problem known in the field and
addressed by the patent can provide a reason for combining the elements in
the manner claimed, as follows:
The flaws in the Federal Circuit's analysis relate mostly to its
narrow conception of the obviousness inquiry consequent in its
application of the TSM test. The Circuit first erred in holding
that courts and patent examiners should look only to the
problem the patentee was trying to solve. Under the correct
analysis, any need or problem known in the field and addressed
by the patent can provide a reason for combining the elements
in the manner claimed [emphasis added].
KSR, 127 S. Ct. at 1732, 82 USPQ2d at 1389-90.
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: September 9, 2013