Appeal 2007-2035
Application 09/848,846
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
with some rational underpinning to support the legal conclusion of
obviousness. . . . [H]owever, 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., 127 S. Ct. at 1741, 82 USPQ2d
at 1396 (quoting In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336
(Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
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