Appeal 2007-1944
Application 10/631,894
49. Ushiro does not challenge the Examiner's findings regarding any of
the other references, nor does Ushiro challenge the Examiner's conclusion of
obviousness based on the combination of references except to argue that the
additional references do not make up for the alleged deficiencies of Prasad
and Shioya. (See Br. at 11 (claim 26), at 13 (claims 52 and 55–57; claims 53,
54; claim 58), and at 14 (claim 59).)
50. Accordingly, we do not find it necessary to describe Lonka, Bateman,
or Faris, or to discuss the Examiner's findings regarding these references.
C. Discussion
Obviousness is a legal conclusion based on underlying findings of fact.
E.g., In re Kahn, 441 F.3d 977, 985, 78 USPQ2d 1329, 1334 (2006). The
Supreme Court recently clarified the legal reasoning to be applied in the
analysis of obviousness in KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82
USPQ2d 1385 (2007), decided after briefing in this appeal was completed.
The Court emphasized that the question of obviousness is to be given
"an expansive and flexible approach" with due attention to "any secondary
considerations that would prove instructive." KSR Int’l Co., 127 S.Ct. at
1739, 82 USPQ2d at 1395. The Court provided several indicia of potential
obviousness. First, the Court observed that "[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." Id. (emphasis added). Thus,
"[w]hen 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
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