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2143


A. Combining Prior Art Elements According to Known Methods To Yield Predictable Results

ADAMS

United States v. Adams, 383 U.S. 39, 50 (1966) (“Nor is the Government’s contention that the electrodes of
Adams were mere substitutions of pre-existing battery designs supported by the prior art.”).

KSR

"Although predictability is a touchstone of obviousness, the ‘predictable result’ discussed in KSR refers not only to the expectation that prior art elements are capable of being physically combined, but also that the combination would have worked for its intended purpose. KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739-40 (2007)." Depuy Spine, Inc v. Medtronic Sofamor Danek, Inc. (Fed. Cir. 2008-1240, -1253, -1401, Decided June 1, 2009).
 
B.    Simple Substitution of One Known Element for Another To Obtain Predictable Results
Example 2:

O'FARRELL

The evidence of record is insufficient to show obviousness if it merely suggests “to explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it.” In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988).
 
C.    Use of Known Technique To Improve Similar Devices (Methods, or Products) in the Same Way

D.    Applying a Known Technique to a Known Device (Method, or Product) Ready for Improvement To Yield Predictable Results

Example 1:

DANN
 
The mere existence of differences between the prior art and the claim does not establish nonobviousness. Dann v. Johnston, 425 U.S. 219, 230 (1976). The issue is “whether the difference between the prior art and the subject matter in question ‘is a differen[ce] sufficient to render the claimed subject matter unobvious to one skilled in the applicable art.’” Dann, 425 U.S. at 228 (citation omitted)
 
E.    "Obvious To Try" - Choosing From a Finite Number of Identified, Predictable Solutions, With a Reasonable Expectation of Success
 
Example 1:

A combination of references only renders a claimed invention obvious if the skilled artisan would have had a reasonable expectation that the combination would work for its intended purpose. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007);

Example 3:
 
KUBIN
 
In Kubin, the court made clear that “where a defendant merely throws metaphorical darts at a board filled with combinatorial prior art possibilities, courts should not succumb to hindsight claims of obviousness.” Kubin, 561 F.3d at 1359.
 
 In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record explicitly discusses the [limitation], [applicant’s] application itself instructs that [the limitation] is not an additional requirement imposed by the claims on the [claimed invention], but rather a property necessarily present in [the claimed invention]”).
 
We are not persuaded. Kubin stated that “[r]esponding to concerns about uncertainty in the prior art influencing the purported success of the claimed combination, this court [in O’Farrell] stated: ‘[o]bviousness does not require absolute predictability of success … all that is required is a reasonable expectation of success.”’ In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re O’Farrell, 853 F.2d 894, 903-904 (Fed. Cir. 1988)).

F.    Known Work in One Field of Endeavor May Prompt Variations of It for Use in Either the Same Field or a Different One Based on Design Incentives or Other Market Forces if the Variations Are Predictable to One of Ordinary Skill in the Art
 
Example 2:

LEAPFROG
 
Obviousness determination is not the result of a rigid formula, and we will consider the facts of a case and the common sense of those skilled in the art. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007). That is, the test for obviousness is rather what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
 
(G)    Some Teaching, Suggestion, or Motivation in the Prior Art That Would Have Led One of Ordinary Skill To Modify the Prior Art Reference or To Combine Prior Art Reference Teachings To Arrive at the Claimed Invention

DYSTAR

PRINCETON

See Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d 1332, 1338-1339 (Fed. Cir. 2005) (affirming obviousness where motivation was found in the knowledge of those skilled in the art at the time, and where the nature of the problem also supplied a motivation). “In other words, the nature of the problem called for exactly the solutions in the prior art.” Id. at 1339. Accord, DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1366 (Fed. Cir. 2006) (“the ‘evidence’ of motive will likely consist of an explanation of the well-known principle or problem-solving strategy to be applied”).

 
 
I.    *PRIOR ART **>SUGGESTION OF< THE DESIRABILITY OF THE CLAIMED INVENTION
 
FULTON

See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art's mere disclosure of more than one alternative does not constitute a teaching away from any … alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed .…”)
 
JONES 

cf., e.g., In re Jones, 958 F.2d 347, 349-51 (Fed. Cir. 1992) (“Conspicuously missing from this record is any evidence, other than the PTO’s speculation (if it be called evidence) that one of ordinary skill in the herbicidal art would have been motivated to make the modifications of the prior art salts necessary to arrive at the claimed . . . salt.”).
 
II.    WHERE THE TEACHINGS OF THE PRIOR ART CONFLICT, THE EXAMINER MUST WEIGH THE SUGGESTIVE POWER OF EACH REFERENCE
 
YOUNG

Where the prior art contains "apparently conflicting" teachings (i.e., where some references teach the combination and others teach away from it) each reference must be considered "for its power to suggest solutions to an artisan of ordinary skill.... consider[ing] the degree to which one reference might accurately discredit another." In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
 
III.    FACT THAT REFERENCES CAN BE COMBINED OR MODIFIED **>MAY NOT BE< SUFFICIENT TO ESTABLISH PRIMA FACIE OBVIOUSNESS
 
IV.    *>MERE STATEMENT< THAT THE CLAIMED INVENTION IS WITHIN THE CAPABILITIES OF ONE OF ORDINARY SKILL IN THE ART IS NOT SUFFICIENT BY ITSELF TO ESTABLISH PRIMA FACIE OBVIOUSNESS
 
KAHN

"‘rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’" KSR Int’l. Co. v. Teleflex Inc. , 550 U.S. 398, 418 (2007) quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
 
The Federal Circuit has stated that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418.
 
KSR

"‘rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’" KSR Int’l. Co. v. Teleflex Inc. , 550 U.S. 398, 418 (2007) quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
 
V.    THE PROPOSED MODIFICATION CANNOT RENDER THE PRIOR ART UNSATISFACTORY FOR ITS INTENDED PURPOSE
 
DANCE

Since “[o]bviousness can not be established by hindsight combination to produce the claimed invention,” In re Dance, 160 F.3d 1339, 1343 (Fed. Cir. 1998), we find that a prima facie case of obviousness has not been established and, accordingly, we reverse the rejection.

Evidence of obviousness must come from the prior art, not the applicant’s own disclosure. In re Dance, 160 F.3d 1339, 1343 (Fed. Cir. 1998). 

GORDON

The mere fact that the prior art may be modified in the manner proposed by the Examiner does not make the modification obvious unless the prior art suggested the desirability of the modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).

If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).

VI.    THE PROPOSED MODIFICATION CANNOT CHANGE THE PRINCIPLE OF OPERATION OF A REFERENCE
 
RATTI

"If a proposed modification or combination of the prior art would change the principle of operation of the prior art device being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious. In re Ratti, 270 F.2d 810, 813 (CCPA 1959)"

A proposed modification or combination of the prior art that would change the principle of operation of the prior art invention being modified, weighs against a conclusion of prima facie obviousness. In re Ratti, 270 F.2d 810, 813 (CCPA 1959).

Where, as here, the proposed modification to the assembly of the primary reference would require a substantial reconstruction and redesign of the elements shown in the primary reference, the modification is likely unobvious. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959).

2143.02 Reasonable Expectation of Success Is Required [R-6]
 
I.    < OBVIOUSNESS REQUIRES ONLY A REASONABLE EXPECTATION OF SUCCESS
 
>II.    < AT LEAST SOME DEGREE OF PREDICTABILITY IS REQUIRED; APPLICANTS MAY PRESENT EVIDENCE SHOWING THERE WAS NO REASONABLE EXPECTATION OF SUCCESS
 
O'FARRELL
 
We are not persuaded. Kubin stated that “[r]esponding to concerns about uncertainty in the prior art influencing the purported success of the claimed combination, this court [in O’Farrell] stated: ‘[o]bviousness does not require absolute predictability of success … all that is required is a reasonable expectation of success.”’ In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re O’Farrell, 853 F.2d 894, 903-904 (Fed. Cir. 1988)).

O’Farrell states that “[o]bviousness does not require absolute predictability of success.” In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988). O’Farrell identifies two kinds of error. In some cases, what would have been
“obvious to try” would have been to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result, where the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful…. In others, what was “obvious to try” was to explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it.
 
RINEHART

Obviousness does not require absolute predictability; however, at least some degree of predictability is required. Evidence showing there was no reasonable expectation of success can support a conclusion of non-obviousness. In re Rinehart, 531 F.2d 1048, 1053-54 (CCPA 1976).

>III. < PREDICTABILITY IS DETERMINED AT THE TIME THE INVENTION WAS MADE

2143.03 All Claim Limitations Must Be **>Considered< [R-6]
 
FINE

In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the Examiner to establish a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988).
 
WILSON
 
It is elementary that to support an obviousness rejection all words in a claim must be considered in judging the patentability of that claim against the prior art. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970)

As the court in In re Wilson, 424 F.2d 1382 (CCPA 1970) stated:

[a]ll words in a claim must be considered in judging the patentability of that claim against the prior art. If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious -- the claim becomes indefinite.

 
>I.    < INDEFINITE LIMITATIONS MUST BE CONSIDERED
 
WILSON
 
All words in a claim must be considered in judging the obviousness of the claimed subject matter. See In re Wilson, 424 F.2d 1382, 1385.

STEELE

A rejection should not be based on "speculations and assumptions." In re Steele, 305 F.2d 859, 862 (CCPA 1962).
 
>II.    < LIMITATIONS WHICH DO NOT FIND SUPPORT IN THE ORIGINAL SPECIFICATION MUST BE CONSIDERED
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