Ex Parte Dombrowski - Page 10



            Appeal 2007-1917                                                                                
            Application 10/222,660                                                                          
                   The Supreme Court stated that “[f]ollowing these principles may be more                  
            difficult in other cases than it is here because the claimed subject matter may                 
            involve more than the simple substitution of one known element for another or the               
            mere application of a known technique to a piece of prior art ready for the                     
            improvement.”  Id.  The Court explained, “[o]ften, it will be necessary for a court             
            to look to interrelated teachings of multiple patents; the effects of demands known             
            to the design community or present in the marketplace; and the background                       
            knowledge possessed by a person having ordinary skill in the art, all in order to               
            determine whether there was an apparent reason to combine the known elements in                 
            the fashion claimed by the patent at issue.”  Id. at 1740-41, 82 USPQ2d at 1396.                
            The Court noted that “[t]o facilitate review, this analysis should be made explicit.”           
            Id., citing In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)                
            (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory                    
            statements; instead, there must be some articulated reasoning with some rational                
            underpinning to support the legal conclusion of obviousness”).   However, “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.                            








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