Appeal 2007-2769
Application 09/929,242
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.” Id., at 17-18,
148 USPQ at 467.
While the sequence of these questions might be reordered in any particular
case, the factors continue to define the inquiry that controls. If a court, or
patent Examiner, conducts this analysis and concludes the claimed subject
matter was obvious, the claim is invalid or unpatentable under §103. See
KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1388
(2007).
Additionally, it is quite apparent that a test for analogousness based on
the problem the applicant inventor was faced with is no longer a proper
analysis. The Court assigned as error that “the Court of Appeals in this case
was to foreclose this reasoning by holding that courts and patent examiners
should look only to the problem the patentee was trying to solve (citation
omitted). The Court of Appeals failed to recognize that the problem
motivating the patentee may be only one of many addressed by the patent’s
subject matter. The question is not whether the combination was obvious to
the patentee but whether the combination was obvious to a person with
ordinary skill in the art.” KSR 127 S.Ct at 1742, 82 USPQ2d at 1397.
ANALYSIS
Taking Appellants’ third argument first, Appellants argue that there is
no motivation for one of ordinary skill to combine the references as the
Examiner has. It is our finding based upon the disclosure of Friemann, that
the saw art recognizes at least two safety systems—one based on sensing
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