Appeal 2007-0586
Application 10/387,812
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.’ Id., at 17–18.
While the sequence of these questions might be reordered in any
particular case, the factors continue to define the inquiry that controls. If a
court, or patent examiner, conducts this analysis and concludes the claimed
subject matter was obvious, the claim is invalid under §103.” KSR Int’l Co.
v. Teleflex Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d at 1391 (U.S. Apr. 30,
2007).
Furthermore, it appears that the Court is advocating the “functional
approach of Hotchkiss” in which the functions of the known prior art
elements are the defining feature and the predictability of the combination is
paramount. “The Court has held that a ‘patent for a combination which only
unites old elements with no change in their respective functions . . .
obviously withdraws what is already known into the field of its monopoly
and diminishes the resources available to skillful men.’” Great Atlantic &
Pacific Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 152
(1950). This is a principal reason for declining to allow patents for what is
obvious. The combination of familiar elements according to known methods
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