Appeal 2006-3366
Application 10/864,041
“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, 1740-41, 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
known element for another or the mere application of a known technique to
a piece of prior art ready for the improvement, a holding of obviousness
must be based on “an apparent reason to combine the known elements in the
fashion claimed.” KSR, 127 S. Ct. at 1740-41, 82 USPQ2d at 1396. That is,
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