Appeal 2007-2220
Application 09/896,231
KSR, 127 S. Ct. at 1740. 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. 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
(quoting In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellants 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 (Fed. Cir. 1992).
The Examiner essentially finds that Haddad teaches every claimed
feature of independent claims 1 and 63, but adds that Haddad does not
disclose the limitations of claim 5 calling for downloading recordable media
content at a higher bit rate. The Examiner, however, cites Hooper as
teaching this feature and concludes that such a feature would have been
obvious to one of ordinary skill in the art at the time of the invention
(Answer 6-7).
At the outset, we note that even though the Examiner indicates that
Haddad anticipates independent claims 1 and 63, the Examiner nonetheless
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