Appeal 2006-3408
Application 10/885,524
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 1395.
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 art ready for the
improvement.” Id. The Court explained, “[o]ften, it will be necessary for a court
to look to interrelated teachings of multiple patents; the effects of demands known
to the design community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the art, all in order to
determine whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue.” Id. at 1740-41, 82 USPQ2d at 1396.
The Court noted that “[t]o facilitate review, this analysis should be made explicit.”
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