Appeal 2007-1944
Application 10/631,894
variation, § 103 likely bars its patentability." Id. at 1740, 82 USPQ2d at
1396, (emphasis added).
The Court explained that "[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 in the patent at issue."
Id. at 1740–41, 82 USPQ2d at 1396. The Court cautioned, however, that
"[t]o facilitate review, this analysis should be made explicit. . . . As our
precedents make clear, 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. at 1741, 82 USPQ2d at 1396.
The Court identified four errors in the analysis of the "teaching,
suggestion, or motivation" ("TSM") test as applied by the court of appeals
below, three of which are especially pertinent to the present case. First, the
Court reminded the bar that "[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton." KSR, 127 S.Ct. at 1742, 82 USPQ2d
at 1397. Second, the Court rejected the thesis that obviousness cannot be
proved merely by showing that a combination of elements would have been
"obvious to try." The Court instructed that "[w]hen there is a design need or
market pressure to solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason
to pursue the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of innovation but of
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