Appeal 2007-0477
Application 10/003,510
1 1734, 82 USPQ2d at 1391 (“While the sequence of these questions might be
2 reordered in any particular case, the [Graham] factors continue to define the
3 inquiry that controls.”)
4 In KSR, the Supreme Court emphasized “the need for caution in
5 granting a patent based on the combination of elements found in the prior
6 art,” id. at 1739, 82 USPQ2d at 1395, and discussed circumstances in which
7 a patent might be determined to be obvious without an explicit application of
8 the teaching, suggestion, motivation test.
9 In particular, the Supreme Court emphasized that “the principles laid
10 down in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11
11 How. 248.” KSR at 11 (citing Graham v. John Deere Co., 383 U.S. 1, 12
12 (1966) (emphasis added)), and reaffirmed principles based on its precedent
13 that “[t]he combination of familiar elements according to known methods is
14 likely to be obvious when it does no more than yield predictable results.” Id.
15 The Court explained:
16 When a work is available in one field of endeavor,
17 design incentives and other market forces can
18 prompt variations of it, either in the same field or a
19 different one. If a person of ordinary skill can
20 implement a predictable variation, §103 likely bars
21 its patentability. For the same reason, if a
22 technique has been used to improve one device,
23 and a person of ordinary skill in the art would
24 recognize that it would improve similar devices in
25 the same way, using the technique is obvious
26 unless its actual application is beyond his or her
27 skill.
6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: September 9, 2013