Appeal 2007-2384
Application 10/943,424
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
must be based on “an apparent reason to combine the known elements in the
fashion claimed.” KSR, 127 S. Ct. at 1740-41, 82 USPQ2d at 1396. That is,
“there must be some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness.” Id., 127 S. Ct. at 1741, 82
USPQ2d at 1396 (quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329,
1336 (Fed. Cir. 2006)). However, it is not necessary to look only to the
problem the patentee was trying to solve; “any need or problem known in
the field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed,” KSR,
127 S. Ct. at 1742, 82 USPQ2d at 1397 (emphasis added).
The reasoning given as support for the conclusion of obviousness can
be based on interrelated teachings of multiple patents, the effects of demands
known to the design community or present in the marketplace, and the
background knowledge possessed by a person having ordinary skill in the
art. KSR, 127 S. Ct. at 1740-41, 82 USPQ2d at 1396. See also Leapfrog,
485 F.3d at 1162, 82 USPQ2d at 1691 (holding it “obvious to combine the
Bevan device with the SSR to update it using modern electronic components
in order to gain the commonly understood benefits of such adaptation, such
as decreased size, increased reliability, simplified operation, and reduced
cost”).
With respect to the role of the Examiner as finder of fact, the Court of
Appeals for the Federal Circuit has stated: “the examiner bears the initial
burden, on review of the prior art or on any other ground, of presenting a
prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In rejecting claims under 35
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