Appeal 2007-0394
Application 09/769,036
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. 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 “[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.”
Id., citing In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds cannot be sustained by mere conclusory
11
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: September 9, 2013