Appeal 2007-1722 Application 10/212,919 Finally, Appellants argue “[t]he ‘obvious design choice’ rejection has been rejected by the Federal Circuit where there is no teaching or suggestion in the reference to modify its own structure in the manner of the rejected claim.” (Br. 4- 5.) To the extent that Appellants argue that an explicit motivation, suggestion, or teaching for the modification must be found in the applied prior art, the argument has been foreclosed by KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d 1385 (2007). In KSR, the Court characterized the teaching, suggestion, motivation test as a “helpful insight” but found that when it is rigidly applied, it is incompatible with the Court’s precedents. KSR, 127 S. Ct. at 1741, 82 USPQ2d at 1396. Helpful insights, however, need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents. The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents. KSR, 127 S. Ct. at 1741, 82 USPQ2d at 1396. 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.” Id. at 1741, 82 USPQ2d at 1396. Accordingly, the application of common sense may control the 12Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
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