Appeal 2007-0820
Application 09/734,808
1 a patent might be determined to be obvious without an explicit application of
2 the teaching, suggestion, motivation test.
3 In particular, the Supreme Court emphasized that “the principles laid
4 down in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11
5 How. 248.” KSR, 127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing Graham v.
6 John Deere Co., 383 U.S. 1, 12, 148 USPQ 459, 464 (1966) (emphasis
7 added)), and reaffirmed principles based on its precedent that “[t]he
8 combination of familiar elements according to known methods is likely to be
9 obvious when it does no more than yield predictable results.” Id. The Court
10 explained:
11 When a work is available in one field of endeavor,
12 design incentives and other market forces can
13 prompt variations of it, either in the same field or a
14 different one. If a person of ordinary skill can
15 implement a predictable variation, §103 likely bars
16 its patentability. For the same reason, if a
17 technique has been used to improve one device,
18 and a person of ordinary skill in the art would
19 recognize that it would improve similar devices in
20 the same way, using the technique is obvious
21 unless its actual application is beyond his or her
22 skill.
23 Id. at 1740, 82 USPQ2d at 1396. The operative question in this “functional
24 approach” is thus “whether the improvement is more than the predictable use
25 of prior art elements according to their established functions.” Id.
26 The Supreme Court made clear that “[f]ollowing these principles may
27 be more difficult in other cases than it is here because the claimed subject
28 matter may involve more than the simple substitution of one known element
29 for another or the mere application of a known technique to a piece of prior
30 art ready for the improvement.” Id. The Court explained, “[o]ften, it will be
10
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