Appeal 2007-1883
Application 10/469,203
1 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). It is incumbent upon the
2 examiner to establish a factual basis to support the legal conclusion of obviousness.
3 See id. at 1073, 5 USPQ2d at 1598. In so doing, the examiner is expected to make
4 the factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17,
5 148 USPQ 459, 467 (1966), viz., (1) the scope and content of the prior art; (2) the
6 differences between the prior art and the claims at issue; and (3) the level of
7 ordinary skill in the art. In addition to these factual determinations, the examiner
8 must also provide “some articulated reasoning with some rational underpinning to
9 support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988, 78
10 USPQ2d 1329, 1336 (Fed. Cir. 2006) (cited with approval in KSR Int’l. Co. v.
11 Teleflex Inc., 127 S.Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007)). Only if this
12 initial burden is met does the burden of coming forward with evidence or argument
13 shift to the appellant. See Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. Id. at
14 1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
15 Obviousness is then determined on the basis of the evidence as a whole and the
16 relative persuasiveness of the arguments. See Oetiker, 977 F.2d at 1445, 24
17 USPQ2d at 1444; Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
18 The Court recently expounded on the obviousness determination in KSR, stating:
19 The question is not whether the combination was obvious
20 to the patentee but whether the combination was obvious
21 to a person with ordinary skill in the art. Under the
22 correct analysis, any need or problem known in the field
23 of endeavor at the time of invention and addressed by the
24 patent can provide a reason for combining the elements
25 in the manner claimed.
26 KSR, 127 S.Ct. at 1742, 82 USPQ2d at 1397.
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