Appeal 2007-1593
Application 10/462,972
The Examiner’s position that, because Perrin’s business card holder is
capable of being mailed, it is appropriate to consider it a “mailer” (Answer
7) is not well taken. Appellant’s argument that it would not have been
obvious to combine Alden with Hobbs because Hobbs is not from
Appellant’s field of endeavor (Appeal Br. 6), however, is unsound. The
combinability of Alden with either Perrin or Hobbs does not turn on whether
Perrin or Hobbs is a “mailer” or whether either of them is from Appellant’s
field of endeavor.
While there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness, “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
Int’l. Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741, 82 USPQ2d 1385, 1396
(2007).
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, 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.
Id., at 1740, 82 USPQ2d at 1396. We must ask whether the improvement is
more than the predictable use of prior art elements according to their
established functions. Id.
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