Ex Parte Wood - Page 10

                Appeal 2007-1983                                                                             
                Application 09/800,366                                                                       
                                                                                                            
                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, KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727,                 
                82 USPQ2d 1385 (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.                                                                             
                KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396.  If the claimed subject matter                   
                cannot be fairly characterized as involving 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, a holding of obviousness can                 
                be based on a showing that “there was an apparent reason to combine the                      
                known elements in the fashion claimed.”  Id., 127 S. Ct. at 1740-41,                         
                82 USPQ2d at 1396.  Such a showing requires “some articulated reasoning                      

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