Appeal 2007-1723
Application 10/893,962
in the Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).
OPINION
We first consider the Examiner’s rejection of claims 1 and 5-12 under
35 U.S.C. § 103(a) as unpatentable over Redelberger in view of Barge. 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).
Discussing the question of obviousness of a patent that claims a
combination of known elements, the Court in KSR Int’l v. Teleflex, Inc., 127
S. Ct. 1727, 82 USPQ2d 1395 (2007) explains:
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. Sakraida [v. AG
Pro, Inc., 425 U.S. 273, 189 USPQ 449 (1976)] and
Anderson's-Black Rock[, Inc. v. Pavement Salvage Co.,
396 U.S. 57, 163 USPQ 673 (1969)] are illustrative—a court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396. If the claimed subject matter
cannot be fairly characterized as involving the simple substitution of one
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