Appeal 2007-2240
Application 09/818,016
1 is likely to be obvious when it does no more than yield predictable results. Id at
2 1739, 82 USPQ2d at 1395. “When a work is available in one field of endeavor,
3 design incentives and other market forces can prompt variations of it, either in the
4 same field or a different one. If a person of ordinary skill can implement a
5 predictable variation, § 103 likely bars its patentability.” Id. at 1740, 82 USPQ2d
6 at 1396. For the same reason, “if a technique has been used to improve one device,
7 and a person of ordinary skill in the art would recognize that it would improve
8 similar devices in the same way, using the technique is obvious unless its actual
9 application is beyond that person’s skill.” Id. “Often, it will be necessary for a
10 court to look to interrelated teachings of multiple patents; the effects of demands
11 known to the design community or present in the marketplace; and the background
12 knowledge possessed by a person having ordinary skill in the art, all in order to
13 determine whether there was an apparent reason to combine the known elements in
14 the fashion claimed by the patent at issue. To facilitate review, this analysis should
15 be made explicit. See In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336
16 (Fed. Cir.2006) (“[R]ejections on obviousness grounds cannot be sustained by
17 mere conclusory statements; instead, there must be some articulated reasoning with
18 some rational underpinning to support the legal conclusion of obviousness”). As
19 our precedents make clear, however, the analysis need not seek out precise
20 teachings directed to the specific subject matter of the challenged claim, for a court
21 can take account of the inferences and creative steps that a person of ordinary skill
22 in the art would employ.” Id. at 1740-41, 82 USPQ2d at 1396. “[T]he analysis
23 need not seek out precise teachings directed to the specific subject matter of the
24 challenged claim, for a court can take account of the inferences and creative steps
25 that a person of ordinary skill in the art would employ.” Id. at 1741, 82 USPQ2d at
26 1396. “The obviousness analysis cannot be confined by a formalistic conception
17
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