Appeal 2007-0025 Page 14
Application 09/792,151
Graham further noted that evidence of secondary considerations “might be utilized
to give light to the circumstances surrounding the origin of the subject matter
sought to be patented.” 383 U.S. at 18, 148 USPQ at 467.
In KSR, the Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” id. at 1739, 82
USPQ2d at 1395, and discussed circumstances in which a patent might be
determined to be obvious.
In particular, the Supreme Court emphasized that “the principles laid down
in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11 How. 248.” KSR,
127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing Graham, 383 U.S. at 12, 148 USPQ
at 464 (emphasis added)), and reaffirmed principles based on its precedent that
“[t]he combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. The Court
explained:
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.
Id. at 1740, 82 USPQ2d at 1396. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use of
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