Ex Parte Paranjpe et al - Page 5

                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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