Appeal 2007-2031
Application 10/905,818
improvement is more than the predictable use of prior art elements according to
their established function.” Id. at 1740, 82 USPQ2d at 1395.
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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