Appeal No. 2007-1110 Page 9
Application No. 09/832,603
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 v. John Deere Co., 383
U.S. 1, 12 (1966) (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
prior art elements according to their established functions.” Id.
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