Appellant loses in Talanis case; US v. Adams cited.
Both KSR and Adams are cited in Ex parte Talanis :
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 International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). However, the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR, 550 U.S. at 416. A prima facie conclusion of obviousness may be supported by a showing that the claims are directed to a process, machine, manufacture, or composition of matter already known in the prior art that is altered by the mere substitution of one element for another known in the field, and such modification yields a predictable result. See id. (citing United States v. Adams, 383 U.S. 39, 40 (1966)). When considering obviousness of a combination of known elements, the operative question is thus “whether the improvement is more than the predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417.
Note also
Appellants also argue that “[i]t is only with use of appellant’s teachings as hindsight knowledge that one can reconstruct the invention.” Req. Reh’g 8 (emphasis added). Appellants’ argument does not persuade us, however, that “only” Appellants’ teachings could have led from Callaghan to the claimed invention or that any hindsight that might have been used in the rejection was improper. See, e.g., In re McLaughlin, 443 F.2d 1392 1313-1314 (CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.”)
Appellants also argue that a specific analytical approach – a genus/species analysis as discussed at MPEP 2144.08 – is necessary to support the obviousness conclusion. Req. Reh’g 8-10, also citing In re Brouwer, 77 F.3d 422, 425 (Fed. Cir. 1996) for the position that “even though a claimed species is encompassed by a prior art genus, this is not sufficient, by itself, to establish a prima facie case of obviousness.” Req. Reh’g 10 (emphasis added). We are unpersuaded that such an analysis is required to support our conclusion of obviousness as discussed infra.
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 International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). However, the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR, 550 U.S. at 416. A prima facie conclusion of obviousness may be supported by a showing that the claims are directed to a process, machine, manufacture, or composition of matter already known in the prior art that is altered by the mere substitution of one element for another known in the field, and such modification yields a predictable result. See id. (citing United States v. Adams, 383 U.S. 39, 40 (1966)). When considering obviousness of a combination of known elements, the operative question is thus “whether the improvement is more than the predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417.
Note also
Appellants also argue that “[i]t is only with use of appellant’s teachings as hindsight knowledge that one can reconstruct the invention.” Req. Reh’g 8 (emphasis added). Appellants’ argument does not persuade us, however, that “only” Appellants’ teachings could have led from Callaghan to the claimed invention or that any hindsight that might have been used in the rejection was improper. See, e.g., In re McLaughlin, 443 F.2d 1392 1313-1314 (CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.”)
Appellants also argue that a specific analytical approach – a genus/species analysis as discussed at MPEP 2144.08 – is necessary to support the obviousness conclusion. Req. Reh’g 8-10, also citing In re Brouwer, 77 F.3d 422, 425 (Fed. Cir. 1996) for the position that “even though a claimed species is encompassed by a prior art genus, this is not sufficient, by itself, to establish a prima facie case of obviousness.” Req. Reh’g 10 (emphasis added). We are unpersuaded that such an analysis is required to support our conclusion of obviousness as discussed infra.
posted by Lawrence B. Ebert at 1:15 PM
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