Appeal 2007-2220
Application 09/896,231
respectively. See In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987); see
also 37 C.F.R. § 41.37(c)(1)(vii).
The Obviousness Rejections
We now consider the Examiner’s rejection of claims 1, 5, and 636
under 35 U.S.C. § 103(a) as unpatentable over Haddad and Hooper. In
rejecting claims under 35 U.S.C. § 103, it is incumbent upon the Examiner
to establish a factual basis to support the legal conclusion of obviousness.
See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so doing, the
Examiner must make the factual determinations set forth in Graham v. John
Deere Co., 383 U.S. 1, 17 (1966).
Discussing the question of obviousness of a patent that claims a
combination of known elements, KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727
(2007) explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
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 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (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.
6 As we indicated previously, we presume that the Examiner intended to
include independent claims 1 and 63 in this obviousness rejection. See n.3,
supra, of this opinion.
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