Appeal 2006-3319
Application 10/366,585
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.
KSR Int’l., 127 S.Ct. at 1740, 82 USPQ2d at 1396. We must ask whether
the improvement is more than the predictable use of prior art elements
according to their established functions. Id.
Appellants' argument that Bardy provides no suggestion for the
combination of Cohn and Bardy is unsound. We find clear suggestion to
combine Cohn's method of implanting a mitral valve cinching device, which
is a cardiac therapeutic device, with Bardy's automated system for
diagnosing and monitoring myocardial ischemia in Bardy's teaching that a
suitable patient for the diagnosing and monitoring system is a recipient of an
implantable medical device, such as a therapeutic device.
While there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness, "the analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ." KSR
Int’l, 127 S.Ct. at 1741, 82 USPQ2d at 1396.
While Cohn may not provide any express teaching that the patient
undergoing the mitral valve cinching device implantation procedure should
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