Appeal 2007-1214
Application 10/272,270
(Buckley, p. 1, ll. 72-74; Figures 5, 11, 13, and 14). Thus, ovoid springs
were well-known in the art at the time the present application was filed.
(See also the instant Specification at 10: 18-20 (rectangular springs
commercially available as of this application’s filing date).)
Thus, claim 1 recites an arrangement of old elements with each
element performing its known prior art function. Moreover, one of ordinary
skill would have expected that ovoid shaped coil springs would carry out the
same function as the coil springs in the prior art apparatus shown in
Appellants’ Figure 3; i.e., both round and ovoid coil springs would be
expected to function as springs.
It is true, as Appellants argue, that “Buckley does not teach . . . that a
device can be improved by replacing its circular coil springs with ovoid coil
springs,” (Br. 7, emphasis added). However, a substitution need not result in
an expected improvement in order to be obvious under § 103. See KSR, 117
S.Ct at 1740, 82 USPQ2d at 1396 (“[W]hen the question is whether a patent
claiming the combination of elements of prior art is obvious, . . . a court
must ask whether the improvement is more than the predictable use of prior
art elements according to their established functions.”). Here, we agree with
the Examiner that those skilled in the art would have expected the prior art
device shown in the Specification’s Figure 3 to function with either round or
ovoid coil springs. We therefore agree with the Examiner that one of
ordinary skill would have considered it obvious to substitute Buckley’s
ovoid shaped coil spring for the coil springs in the prior art apparatus
depicted in Appellants’ Figure 3.
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