Appeal 2007-1727
Application 10/836,916
that the claim language is clear both on its face and also in view of the
disclosure, and we will not sustain the rejection under 35 U.S.C. § 112,
second paragraph.
The Examiner (Answer 4) admits that Houle does not disclose the legs
being formed from the body portion of the heat spreader. However, the
Examiner asserts (Answer 4) that it would have been obvious to the skilled
artisan to form the legs from Houle's heat spreader "to simplify the
processing steps of making the device." The Examiner (Answer 8) clarifies
that "if the legs are required to be formed as an integral part of the body
portion, then it is a simpler process to bend the material of the body portion
in order to form the legs, than attaching the legs to the body portion as
separate elements." Appellants contend (Br. 14-17) that the Examiner's
rationale for modifying Houle is unsubstantiated and must have a factual
basis in the prior art. The issue before us is whether the Examiner's
reasoning for modifying Houle is sufficient to establish a prima facie case of
obviousness.
The Supreme Court has held that in analyzing the obviousness of
combining elements, a court need not find specific teachings, but rather may
consider "the background knowledge possessed by a person having ordinary
skill in the art" and "the inferences and creative steps that a person of
ordinary skill in the art would employ." See KSR Int’l v. Teleflex Inc., 127
S. Ct. 1727, 1740-41, 82 USPQ2d 1385, 1396 (2007). To be nonobvious, an
improvement must be "more than the predictable use of prior art elements
according to their established functions." Id. However, the basis for an
obviousness rejection cannot be merely conclusory statements; there must be
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