Appeal 2006-3331
Application 10/829,797
The Supreme Court stated that “[t]hree cases decided after Graham illustrate
the application of this doctrine.” Id. at 1739, 82 USPQ2d at 1395. “In United
States v. Adams, … [t]he Court recognized that when a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than yield a
predictable result.” Id. at 1739-40, 82 USPQ2d at 1395. “Sakraida and
Anderson’s-Black Rock are illustrative – a court must ask whether the
improvement is more than the predictable use of prior art elements according to
their established function.” Id. at 1740, 82 USPQ2d at 1395.
The Supreme Court stated that “[f]ollowing these principles may be more
difficult in other cases than it is here because the claimed subject matter may
involve more than the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
improvement.” Id. The Court explained:
Often, it will be necessary for a court to look to
interrelated teachings of multiple patents; the effects of
demands known to the design community or present in
the marketplace; and the background knowledge
possessed by a person having ordinary skill in the art, all
in order to determine whether there was an apparent
reason to combine the known elements in the fashion
claimed by the patent at issue.”
Id. at 1740-41, 82 USPQ2d at 1396. The Court noted that “[t]o facilitate review,
this analysis should be made explicit.” Id., citing In re Kahn, 441 F.3d 977, 988,
78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be some
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