Appeal 2007-2111
Application 09/921,204
1 987-88, 78 USPQ2d at 1336 (“the teaching, motivation, or suggestion may
2 be implicit from the prior art as a whole, rather than expressly stated in the
3 references”); and In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502
4 (Fed. Cir. 1988) (“for the purpose of combining references, those references
5 need not explicitly suggest combining teachings”). The court recently noted,
6 An explicit teaching that identifies and selects elements from
7 different sources and states that they should be combined in the
8 same way as in the invention at issue, is rarely found in the
9 prior art. As precedent illustrates, many factors are relevant to
10 the motivation-to-combine aspect of the obviousness inquiry,
11 such as the field of the specific invention, the subject matter of
12 the references, the extent to which they are in the same or
13 related fields of technology, the nature of the advance made by
14 the applicant, and the maturity and congestion of the field.
15 In re Johnston, 435 F.3d 1381, 1385, 77 USPQ2d 1788, 1790 (Fed. Cir.
16 2006).
17 The Supreme Court has provided guidelines for determining obviousness
18 based on the Graham factors. KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727, 82
19 USPQ2d 1385 (2007). “A combination of familiar elements according to
20 known methods is likely to be obvious when it does no more than yield
21 predictable results.” Id. at 1731, 82 USPQ2d at 1396. “When a work is
22 available in one field of endeavor, design incentives and other market forces
23 can prompt variations of it, either in the same field or a different one. If a
24 person of ordinary skill can implement a predictable variation, §103 likely
25 bars its patentability.” Id. For the same reason, “if a technique has been
26 used to improve one device, and a person of ordinary skill in the art would
27 recognize that it would improve similar devices in the same way, using the
28 technique is obvious unless its actual application is beyond that person’s
11
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: September 9, 2013