Ex Parte Denison et al - Page 7

               Appeal 2007-0958                                                                             
               Application 10/807,935                                                                       
                      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 v. John Deere Co., 383 U.S. 1, 12                           
               (1966) (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 stated that there are “[t]hree cases decided after                  
               Graham [that] illustrate this doctrine.”  Id. at 1739, 82 USPQ2d at 1395.  “In               
               United States v. Adams, … [t]he Court recognized that when a patent claims                   
               a structure already known in the prior art that is altered by the mere                       

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