Appeal 2006-2748
Application 10/123,268
1 PRINCIPLES OF LAW
2 Motivation to combine references “may be found in implicit factors,
3 such as ‘knowledge of one of ordinary skill in the art, and [what] the nature
4 of the problem to be solved as a whole would have suggested to those of
5 ordinary skill in the art’.” Alza Corp. v. Mylan Labs., 464 F.3d 1286, 1291,
6 80 USPQ2d 1001, 1004 (Fed. Cir. 2006) (quoting In re Kahn, 441 F.3d 977,
7 988, 78 USPQ2d 1329, 1337 (Fed. Cir. 2006)). See also KSR Int’l v.
8 Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d 1385, 1396 (2007). (citing with
9 approval In re Kahn, 441 F.3d at 988, 78 USPQ2d at 1336).
10 If a technique has been used to improve one device, and a person of
11 ordinary skill in the art would recognize that it would improve similar
12 devices in the same way, using the technique is obvious unless its actual
13 application is beyond that person’s skills. It must be determined whether the
14 improvement is no more than the predictable use of prior art elements
15 according to their established functions. KSR, 127 S. Ct. at 1732, 82
16 USPQ2d at 1395.
17 “The presence or absence of a motivation to combine references in an
18 obviousness determination is a pure question of fact.” In re Gartside, 203
19 F.3d 1305, 1316, 53 USPQ2d 1769, 1776 (Fed. Cir. 2000).
20
21 ANALYSIS
22 Appellant is correct that Mangano involves a card game rather than a
23 wheel of fortune type game as is disclosed in Baerlocher. However, even
24 though Mangano utilizes the plurality of concentric wheels to display the
25 hand of the card player, one of ordinary skill would recognize the
26 advantages of such a display as applied to the wheel of fortune type game of
5
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Last modified: September 9, 2013