Appeal 2007-2031
Application 10/905,818
The Supreme Court also addressed the breadth of problems that one of
ordinary skill in the art might consider as reasons for combining elements from
different sources in the prior art.
The first error of the Court of Appeals in this case was to
foreclose this reasoning by holding that courts and patent
examiners should look only to the problem the patentee
was trying to solve. 119 Fed.Appx., at 288. The Court
of Appeals failed to recognize that the problem
motivating the patentee may be only one of many
addressed by the patent's subject matter. The question is
not whether the combination was obvious to the patentee
but whether the combination was obvious to a person
with ordinary skill in the art. Under the correct analysis,
any need or problem known in the field of endeavor at
the time of invention and addressed by the patent can
provide a reason for combining the elements in the
manner claimed.
The second error of the Court of Appeals lay in its
assumption that a person of ordinary skill attempting to
solve a problem will be led only to those elements of
prior art designed to solve the same problem.
KSR, 127 S.Ct. at 1742, 82 USPQ2d at 1397. It is thus appropriate for the
Examiner to consider problems outside those considered by the patentee in
addressing whether it would have been obvious to one of ordinary skill in the art at
the time the invention was made to combine elements from different sources in the
prior art.
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