Appeal 2007-1275
Application 09/824,248
'functional approach' of Hotchkiss, 11 How. 248 [(1850)]." KSR, 127 S. Ct.
at 1739, 82 USPQ2d at 1395 (citing Graham v. John Deere Co., 383 U.S. 1,
12, 148 USPQ 459, 464 (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. at 1740,
82 USPQ2d at 1396.
The Court noted that "[t]o facilitate review, this [obviousness]
analysis should be made explicit." Id. at 1741, 82 USPQ2d at 1396 (citing
In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
("[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
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