Ex Parte Kikuchi et al - Page 4

               Appeal 2007-2490                                                                           
               Application 09/846,255                                                                     
                                                                                                         
                     Pro, Inc., 425 U.S. 273, 189 USPQ 449 (1976)] and                                    
                     Anderson's-Black Rock[, Inc. v. Pavement Salvage Co.,                                
                     396 U.S. 57, 163 USPQ 673 (1969)] are illustrative—a court                           
                     must ask whether the improvement is more than the predictable                        
                     use of prior art elements according to their established                             
                     functions.                                                                           
               KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396.  If the claimed subject matter                 
               cannot be fairly characterized as involving the simple substitution of one                 
               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 can               
               be based on a showing that “there was an apparent reason to combine the                    
               known elements in the fashion claimed.”  Id., 127 S. Ct. at 1740-41,                       
               82 USPQ2d at 1396.  Such a showing requires “some articulated reasoning                    
               with some rational underpinning to support the legal conclusion of                         
               obviousness. . . . [H]owever, the analysis need not seek out precise teachings             
               directed to the specific subject matter of the challenged claim, for a court               
               can take account of the inferences and creative steps that a person of                     
               ordinary skill in the art would employ.”  Id., 127 S. Ct. at 1741, 82 USPQ2d               
               at 1396 (quoting In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336                       
               (Fed. Cir. 2006)).                                                                         
                     If the Examiner’s burden is met, the burden then shifts to the                       
               Appellants to overcome the prima facie case with argument and/or evidence.                 
               Obviousness is then determined on the basis of the evidence as a whole and                 
               the relative persuasiveness of the arguments.  See In re Oetiker, 977 F.2d                 
               1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).                                         




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