Ex Parte Westlund et al - Page 7

                Appeal  2007-0811                                                                              
                Application 10/128,997                                                                         

                KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391 (“While the sequence of these                        
                questions might be reordered in any particular case, the [Graham] factors                      
                continue to define the inquiry that controls.”)  The Court in Graham further                   
                noted that evidence of secondary considerations “might be utilized to give                     
                light to the circumstances surrounding the origin of the subject matter sought                 
                to be patented.” 383 U.S. at 18, 148 USPQ at 467.                                              
                      In KSR, the Supreme Court emphasized “the need for caution in                            
                granting a patent based on the combination of elements found in the prior                      
                art,” id. at 1739, 82 USPQ2d at 1395, and discussed circumstances in which                     
                a patent might be determined to be obvious.                                                    
                      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                                


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