Appeal 2007-3787
Reexamination 90/006,642
Patent 4,944,298
1 Berkovits or Sholder is at most only in a general sense and does not provide
2 motivation to use a physiological sensor to control pacing in the switched
3 mode in a multi-threshold pacemaker that switches modes at rates above a
4 second threshold instead of a first threshold.
5 The argument is misplaced. The Applicant appears to regard the test
6 for obviousness as requiring a specific disclosure in the prior art expressly
7 providing for every twist and turn in the claims. But that is not the law.
8 Motivation to combine teachings need not be expressly stated in any prior
9 art reference. In re Kahn, 441 F.3d at 989, 78 USPQ2d at 1338. There need
10 only be an articulated reasoning with rational underpinnings to support a
11 motivation to combine teachings. In re Kahn, 441 F.3d at 988, 78 USPQ2d
12 at 1336. The logic, common sense, and ordinary creativity of one with
13 ordinary skill cannot be ignored. The person of ordinary skill should be able
14 to apply a general teaching in a straight forward manner to specific
15 circumstances.
16 In KSR International Co., 127 S. Ct. at 1742, 82 USPQ2d at 1397,
17 with regard to motivation to combine teachings, the Supreme Court stated:
18 “Rigid preventive rules that deny factfinders recourse to common sense,
19 however, are neither necessary under our case law nor consistent with it.”
20 One with ordinary skill in the art is presumed to have skills apart from what
21 the prior art references explicitly say. See In re Sovish, 769 F.2d at 743, 226
22 USPQ at 774. A person of ordinary skill in the art is also a person of
23 ordinary creativity, not an automaton. KSR International Co., 127 S.Ct. at
24 1742, 82 USPQ2d at 1397. Applying a general teaching disclosed in
25 connection with a particular circumstance to other circumstances to reap the
10
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