Appeal 2007-2490 Application 09/846,255 Rather than repeat the arguments of Appellants or the Examiner, we refer to the Briefs and the Answer2 for their respective details. In this decision, we have considered only those arguments actually made by Appellants. Arguments which Appellants could have made but did not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). OPINION In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the Examiner to establish a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the Examiner must make the factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). Discussing the question of obviousness of a patent that claims a combination of known elements, KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727, 82 USPQ2d 1395 (2007) explains: When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Sakraida [v. AG 2 We refer to the most recent Examiner’s Answer, mailed Sept. 1, 2006, throughout this opinion. 3Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: September 9, 2013