Ex Parte Swoboda et al - Page 8

              Appeal 2007-1754                                                                     
              Application 09/943,599                                                               
                                                                                                  
                                    The Obviousness Rejections                                     
                    We likewise cannot sustain the Examiner’s obviousness rejections               
              under 35 U.S.C. § 103 of (1) independent claim 13 based on the combined              
              disclosures of Sites and Mann, and (2) independent claims 23 and 24 based            
              on the combined disclosures of Sites, Mann, and Edwards for similar                  
              reasons.                                                                             
                    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, 1740, 82 USPQ2d 1395, 1396 (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.                                                                     


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