Appeal 2007-2807
Reexamination 90/006,511
Patent 5,156,811
“Rigid preventive rules that deny factfinders recourse to common sense,
however, are neither necessary under our case law nor consistent with it.”
Motivation to combine teachings need not be expressly stated in any
prior art reference. In re Kahn, 441 F.3d 977, 989, 78 USPQ2d 1329, 1338.
(Fed. Cir. 2006). There need only be an articulated reasoning with rational
underpinnings to support a motivation to combine teachings. In re Kahn,
441 F.3d at 988, 78 USPQ2d at 1337.
The motivation to combine prior art teachings need not be the same as
that of the applicant. In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309,
1311 (Fed. Cir. 1996). Prior art references need not be combined in a
manner which attempts to solve the same problem as that with which the
inventor is concerned. See In re Dillon, 919 F.2d 688, 693, 16 USPQ2d
1897, 1901 (Fed. Cir. 1990) (in banc).
A combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.
KSR, 127 S. Ct. at 1739, 82 USPQ2d at 1395. 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.
KSR International Co., 127 S. Ct. at 1740, 82 USPQ2d at 1396.
F. Analysis
In this case, as in any appeal from an Examiner’s rejection, the
patentee must demonstrate error in the rejections on appeal. The reply brief,
however, may not properly include arguments which the patentee could and
should have included in the principal brief but chose not to do so. We will
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