Appeal 2007-2451
Application 10/694,925
1 design incentives and other market forces can prompt variations of it, either in the
2 same field or a different one. If a person of ordinary skill can implement a
3 predictable variation, § 103 likely bars its patentability.” Id. at 1740, 82 USPQ2d
4 at 1396. For the same reason, “if a technique has been used to improve one device,
5 and a person of ordinary skill in the art would recognize that it would improve
6 similar devices in the same way, using the technique is obvious unless its actual
7 application is beyond that person’s skill.” Id. “Often, it will be necessary for a
8 court to look to interrelated teachings of multiple patents; the effects of demands
9 known to the design community or present in the marketplace; and the background
10 knowledge possessed by a person having ordinary skill in the art, all in order to
11 determine whether there was an apparent reason to combine the known elements in
12 the fashion claimed by the patent at issue. To facilitate review, this analysis should
13 be made explicit. See In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336
14 (Fed. Cir.2006) (“[R]ejections on obviousness grounds cannot be sustained by
15 mere conclusory statements; instead, there must be some articulated reasoning with
16 some rational underpinning to support the legal conclusion of obviousness”). As
17 our precedents make clear, however, the analysis need not seek out precise
18 teachings directed to the specific subject matter of the challenged claim, for a court
19 can take account of the inferences and creative steps that a person of ordinary skill
20 in the art would employ.” Id. at 1740-41, 82 USPQ2d at 1396. “[T]he analysis
21 need not seek out precise teachings directed to the specific subject matter of the
22 challenged claim, for a court can take account of the inferences and creative steps
23 that a person of ordinary skill in the art would employ.” Id. at 1741, 82 USPQ2d at
24 1396. “The obviousness analysis cannot be confined by a formalistic conception
25 of the words teaching, suggestion, and motivation, or by overemphasis on the
26 importance of published articles and the explicit content of issued patents. The
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