Appeal 2007-1340
Application 09/996,125
updating system transaction files for each department of the organization).
To be nonobvious, an improvement must be "more than the predictable use
of prior art elements according to their established functions." KSR,
127 S. Ct. at 1740, 82 USPQ2d at 1396.
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 [(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
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