Appeal 2006-3208
Application 10/097,232
Goodrich’s microorganism-destroying photosensitizers would have been
obvious to one of ordinary skill in the art at the relevant time.
The Supreme Court has recently spoken on the “combination of
familiar elements according to known methods . . . when it does no more
than yield predictable results.” KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727,
1739 (2007). Relevant to the facts in this case, the Court noted, “if a
technique has been used to improve one device,” in Goodrich, using
photosensitizers for inactivating microorganism in body fluids, “and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way,” by inactivating microorganisms in
conveyor lubricants, “using the technique is obvious unless its actual
application is beyond his or her skill.” KSR Int’l, 127 S. Ct. at 1740.
Given the detailed prior art teachings regarding the use of
photosensitizers, the claimed combination would not have been beyond the
level of skill in the art. Id. at 1742 (“A person of ordinary skill is also a
person of ordinary creativity, not an automaton.”). Thus, one skilled in the
art would have been motivated to combine the cited prior art teachings and
would have been able to do so with a reasonable likelihood of success (FFs
17 & 18). The resulting claimed combination would have been no “more
than the predictable use of prior art elements according to their established
functions.” 127 S. Ct. at 1740.
We conclude the invention of claim 1 would have been prima facie
obvious to one of ordinary skill in the art at the time the claimed invention
was made. “Granting patent protection” in the absence of any unexpected
results would “retard[] progress and may . . . deprive prior inventions of
their value or utility.” Id. at 1741.
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: September 9, 2013