Ex Parte Hirzel - Page 5

                   Appeal 2006-3366                                                                                                 
                   Application 10/864,041                                                                                           
                           “The combination of familiar elements according to known methods                                         
                   is likely to be obvious when it does no more than yield predictable results.”                                    
                   Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161,                                                
                   82 USPQ2d 1687, 1691 (Fed. Cir. 2007) (quoting KSR Int’l v. Teleflex, Inc.,                                      
                   127 S. Ct. 1727, 1740-41, 82 USPQ2d 1385, 1395 (2007)).  “One of the                                             
                   ways in which a patent's subject matter can be proved obvious is by noting                                       
                   that there existed at the time of invention a known problem for which there                                      
                   was an obvious solution encompassed by the patent's claims.”  KSR,                                               
                   127 S. Ct. at 1742, 82 USPQ2d at 1397.                                                                           
                           Discussing the question of obviousness of a claimed combination of                                       
                   elements of prior art, KSR explains:                                                                             
                           When a work is available in one field of endeavor, design                                                
                           incentives and other market forces can prompt variations of it,                                          
                           either in the same field or a different one.  If a person of                                             
                           ordinary skill can implement a predictable variation, § 103                                              
                           likely bars its patentability.  For the same reason, if a technique                                      
                           has been used to improve one device, and a person of ordinary                                            
                           skill in the art would recognize that it would improve similar                                           
                           devices in the same way, using the technique is obvious unless                                           
                           its actual application is beyond his or her skill.  Sakraida [v. AG                                      
                           Pro, Inc., 425 U.S. 273, 189 USPQ 449 (1976)] and                                                        
                           Anderson's-Black Rock [Inc. v. Pavement Salvage Co., 396 U.S.                                            
                           57, 163 USPQ 673 (1969)] are illustrative—a court must ask                                               
                           whether the improvement is more than the predictable use of                                              
                           prior art elements according to their established functions.                                             
                   KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396.  Where, on the other hand, the                                       
                   claimed subject matter involves more than the simple substitution one                                            
                   known element for another or the mere application of a known technique to                                        
                   a piece of prior art ready for the improvement, a holding of obviousness                                         
                   must be based on “an apparent reason to combine the known elements in the                                        
                   fashion claimed.”  KSR, 127 S. Ct. at 1740-41, 82 USPQ2d at 1396.  That is,                                      

                                                                 5                                                                  

Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next

Last modified: September 9, 2013