Appeal 2007-2206
Application 10/181,977
proportion because Roussel and Laurent do not disclose “any particular
angled side faces at all or even a sheet with protuberances that each have
flattened free-end portions with rounded edges” (id.). Therefore, Appellant
argues, “the proposed modification goes beyond a mere change in size or
shape and must be the product of improper hindsight in order to support the
rejection” (id.).
We are not persuaded by this argument. Recently addressing the issue
of obviousness, Supreme Court stated that “[a] person of ordinary skill is . . .
a person of ordinary creativity, not an automaton.” KSR Int'l v. Teleflex
Inc., 127 S. Ct. 1727, 1742, 82 USPQ2d 1385, 1397 (2007). Thus, the
analysis under 35 U.S.C. § 103 “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. at 1741, 82 USPQ2d at 1396. Regarding
hindsight reasoning, the Court noted that “[a] factfinder should be aware, of
course, of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning. Rigid preventative rules that deny
factfinders recourse to common sense, however, are neither necessary under
our case law nor consistent with it.” Id. at 1742, 82 USPQ2d at 1397
(citations omitted).
As discussed above, Figures 8a and 8b of Roussel are photographs of
cross sections protuberances prepared according to Roussel’s disclosure
(Roussel 11). The angles of the protuberance faces in the photograph appear
to be the same as, or very similar to, the angles recited in claim 5. Given the
angles in the Roussel’s photographs, we agree with the Examiner that, being
11
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