Appeal 2007-1596
Application 09/996,707
John Deere of Kansas City, 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
“[A]nalysis [of whether the subject matter of a claim is obvious] 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.” KSR Int’l Co.
v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41, 82 USPQ2d 1385, 1396 (2007),
quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336-37 (Fed.
Cir. 2006). As held by the Supreme Court in KSR, 127 S. Ct. at 1739, 82
USPQ2d at 1395:
Neither the enactment of § 103 nor the analysis in Graham
disturbed this Court’s earlier instructions concerning the need for
caution in granting a patent based on the combination of elements
found in the prior art. For over a half century, the Court has held that
a “patent for a combination which only unites old elements with no
change in their respective functions … obviously withdraws what is
already known into the field of its monopoly and diminishes the
resources available to skillful men.” Great Atlantic & Pacific Tea Co.
v. Supermarket Equipment Corp., [340 U.S. 147, 152 (1950)]. This is
a principal reason for declining to allow patents for what is obvious.
The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable
results.
Furthermore, the Court reiterated its holding in KSR by stating that “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.” KSR, 127 S. Ct. at 1739-40, 82 USPQ2d at 1396.
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has established a
prima facie case of obviousness in view of the reference evidence, which
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