Appeal 2007-1541
Application 10/334,695
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.
The Supreme Court stated that there are “[t]hree cases decided after
Graham [that] illustrate this doctrine.” Id. at 1739, 82 USPQ2d at 1395. “In
United States v. Adams, … [t]he Court recognized that when a patent claims
a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” Id. at 1739-40, 82 USPQ2d at
1395. “Sakraida and Anderson’s-Black Rock are illustrative – a court must
ask whether the improvement is more that the predictable use of prior art
elements according to their established function.” Id. at 1740, 82 USPQ2d
at 1396.
The Supreme Court stated 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
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