Appeal 2007-2557
Application 10/094,866
of the prior art,”’ ascertains ‘“the differences between the prior art and the
claims at issue,”’ and resolves ‘“the level of ordinary skill in the pertinent
art.’”” In re Kahn, 441 F.3d 977, 985, 78 USPQ2d 1329, 1334-35 (Fed. Cir.
2006) (quoting Dann v. Johnston, 425 U.S. 219, 226, 189 USPQ 257, 260
(1976) (quoting Graham, 383 U.S. at 17, 148 USPQ at 467)). “Against this
background, the Board determines whether the subject matter would have
been obvious to a person of ordinary skill in the art at the time of the
asserted invention.” Id., 78 USPQ2d at 1335.
“One of the ways in which an [application’s] subject matter can be
proved obvious is by noting that there existed at the time of the invention a
known problem for which there was an obvious solution encompassed by the
. . . claims.” KSR Int’l, 127 S. Ct. at 1742, 82 USPQ2d at 1397.
While “rejections on obviousness grounds cannot be sustained by
mere conclusory statements,” Kahn, 441 F.3d at 988, 78 USPQ2d at 1336, a
determination that a claimed invention would have been obvious “need not
seek out precise teachings directed to specific subject matter of the . . .
claim, for [the Board] can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.” KSR Int’l, 127 S.
Ct. at 1741, 82 USPQ2d at 1396. Thus, “a reference must be considered not
only for what it expressly teaches, but also for what it fairly suggests.” In re
Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 70 (CCPA 1979), quoted with
approval in In re Baird, 16 F.3d 380, 383, 29 USPQ2d 1550, 1552 (Fed. Cir.
1994).
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