Appeal 2007-2503
Application 10/225,978
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). In addressing the
findings of fact, “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR at 1739, 82 USQP2d at 1395. As explained in KSR:
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 and Anderson's-Black Rock 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 at 1740, 82 USPQ2d at 1396. As recognized in KSR, “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.”
KSR at 1742, 82 USPQ2d at 1397.
On appeal, Applicant bears the burden of showing that the Examiner
has not established a legally sufficient basis for combining the teachings of
the prior art. Applicant may sustain its burden by showing that where the
Examiner relies on a combination of disclosures, the Examiner failed to
provide sufficient evidence to show that one having ordinary skill in the art
would have done what Applicant did. United States v. Adams, 383 U.S. 39,
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