Appeal 2007-2384
Application 10/943,424
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,
464 F.3d 1356, 1360, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006) (citing
Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966)).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161,
82 USPQ2d 1687, 1691 (Fed. Cir. 2007) (quoting KSR Int’l v. Teleflex, Inc.,
127 S. Ct. 1727, 1739, 82 USPQ2d 1385, 1395 (2007)). “One of the ways in
which a patent's subject matter can be proved obvious is by noting that there
existed at the time of invention a known problem for which there was an
obvious solution encompassed by the patent's claims.” KSR, 127 S. Ct. at
1742, 82 USPQ2d at 1397.
Discussing the question of obviousness of a claimed combination of
elements of prior art, KSR explains:
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. Sakraida [v. AG
Pro, Inc., 425 U.S. 273, 189 USPQ 449 (1976)] and
Anderson's-Black Rock [Inc. v. Pavement Salvage Co., 396 U.S.
57, 163 USPQ 673 (1969)] are illustrative—a court must ask
whether the improvement is more than the predictable use of
prior art elements according to their established functions.
KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396. Where, on the other hand, the
claimed subject matter involves more than the simple substitution, one
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