Ex Parte Simpson et al - Page 11

                Appeal 2007-0781                                                                               
                Application 10/003,150                                                                         

                      In particular, the Supreme Court emphasized that “the principles laid                    
                down in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11                           
                How. 248.” KSR, 127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing Graham,                           
                383 U.S. at 12, 148 USPQ at 464 (emphasis added)), and reaffirmed                              
                principles based on its precedent that “[t]he combination of familiar                          
                elements according to known methods is likely to be obvious when it does                       
                no more than yield predictable results.” Id. The Court explained:                              
                             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 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. 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                             


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