Appeal 2007-0726
Application 10/264,561
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.
KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396. When the issue is whether a
combination of known prior art elements is obvious, the operative question
is “whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
The Supreme Court made clear 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. In that case, a reason for making the
combination supported by specific reasoning with a rational underpinning is
required. 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.”
KSR, 127 S. Ct. at 1740-41, 82 USPQ2d at 1396. The Court noted that “[t]o
facilitate review, this analysis should be made explicit. Id. However, “the
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
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