Appeal 2007-1417
Application 09/877,536
464), and explained how its precedent illustrates the doctrine 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. at 1740,
82 USPQ2d at 1396.
The Supreme Court made clear that:
[f]ollowing these principles may be more difficult
in other cases than it is here because the claimed
subject matter may involve more than the simple
substitution of one known element for another or
the mere application of a known technique to a
piece of prior art ready for the improvement.
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