Appeal 2007-1229
Application 10/325,333
1 John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See also
2 KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391 (“While the sequence of these
3 questions might be reordered in any particular case, the [Graham] factors
4 continue to define the inquiry that controls.”) The Court in Graham further
5 noted that evidence of secondary considerations, such as commercial
6 success, long felt but unsolved needs, failure of others, etc., “might be
7 utilized to give light to the circumstances surrounding the origin of the
8 subject matter sought to be patented.” 383 U.S. at 18, 148 USPQ at 467.
9 In KSR, the Supreme Court emphasized “the need for caution in
10 granting a patent based on the combination of elements found in the prior
11 art,” id. at 1739, 82 USPQ2d at 1395, and discussed circumstances in which
12 a patent might be determined to be obvious without an explicit application of
13 the teaching, suggestion, motivation test.
14 In particular, the Supreme Court emphasized that “the principles laid
15 down in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11
16 How. 248.” KSR, 127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing Graham,
17 383 U.S. at 12, 148 USPQ at 464 (emphasis added)), and reaffirmed
18 principles based on its precedent that “[t]he combination of familiar
19 elements according to known methods is likely to be obvious when it does
20 no more than yield predictable results.” Id. The Court explained:
21 When a work is available in one field of endeavor, design incentives
22 and other market forces can prompt variations of it, either in the same
23 field or a different one. If a person of ordinary skill can implement a
24 predictable variation, § 103 likely bars its patentability. For the same
25 reason, if a technique has been used to improve one device, and a
26 person of ordinary skill in the art would recognize that it would
27 improve similar devices in the same way, using the technique is
28 obvious unless its actual application is beyond his or her skill.
11
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