Appeal 2007-3195
Application 09/824,936
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) any secondary considerations. Graham v.
John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). “[A]nalysis
[of whether the subject matter of a claim is obvious] 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.” KSR Int’l Co. Teleflex,
Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007) quoting In re
Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). See
DyStar Textilfarben GmBH & Co. Deutschland KG v. C.H. Patrick Co.,
464 F.3d 1356, 1361, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006)(“The
motivation need not be found in the references sought to be combined, but
may be found in any number of sources, including common knowledge, the
prior art as a whole, or the nature of the problem itself.”). The analysis
supporting obviousness, however, should be made explicit and should
“identify a reason that would have prompted a person of ordinary skill in the
relevant field to combine the elements” in the manner claimed. KSR,
127 S. Ct. at 1741, 82 USPQ2d at 1396. “The 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).
Here, Appellant’s assertions of a lack of motivation and/or reasonable
expectation of success for the use of a RF generator capable of providing
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