Appeal 2007-0796
Application 10/236,088
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. We must ask whether the improvement is
more than the predictable use of prior art elements according to their
established functions. Id.
Further, when the improvement is technology-independent and the
combination of references results in a product or process that is more
desirable, an implicit motivation to combine exists even absent any hint of
suggestion in the references themselves. "In such situations, the proper
question is whether the ordinary artisan possesses knowledge and skills
rendering him capable of combining the prior art references." DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006).
In this case, the three references applied by the Examiner evidence
that the prior art offered two basic alternative locations for retractable and
extendable information strips, one location being within the article, such as
within a pharmaceutical container as taught by Mengel or within the body of
a writing instrument as in the prior art discussed in Fisher (Fisher, col. 1, ll.
5-16), and the other location being within a cap for use with the article, such
as a pen or pencil as taught or suggested by Klophaus and Fisher. We find
no indication in any of the applied references that the particular retractable
information strip arrangements have specific and exclusive application to the
22
Page: Previous 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 Next
Last modified: September 9, 2013