Appeal 2007-0025 Page 30
Application 09/792,151
requests by consumers may include purchases. Accordingly all the elements of the
argued-for feature – i.e., vary the advertisement rate based upon these sales – are
known in the art. “The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1739, 82 USPQ2d 1385,
1395 (2007). In that regard, Appellants have provided no objective evidence of
unexpected results.
Appellants also argue that “there is no motivation to combine Gerace and the
other three references; they address different problems” (FF 8). However, just
because references address different problems does not, per se, affect their
applicability as prior art against the claims.
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.
(Id. at 1740, 82 USPQ2d at 1396).
Finally, Appellants argue that the “Examiner solely alleges that the
motivation would have been that such a combination that one of ordinary skill in
the art would have been motivated to combine the reference in order to charge
better rates for advertisements that are deemed more effective” (FF 9). Appellants
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