Appeal 2007-1417
Application 09/877,536
subject matter sought to be patented." 383 U.S. at 18, 148 USPQ at 467. "If
a court, or patent examiner, conducts this analysis and concludes the claimed
subject matter was obvious, the claim is invalid under § 103." KSR,
127 S. Ct. at 1734, 82 USPQ2d at 1391.
The mere existence of differences between the prior art and the claim
does not establish nonobviousness. Dann v. Johnston, 425 U.S. 219, 230,
189 USPQ 257, 261 (1976). The issue is "whether the difference between
the prior art and the subject matter in question 'is a difference sufficient to
render the claimed subject matter unobvious to one skilled in the applicable
art.'" Dann, 425 U.S. at 228-29, 189 USPQ at 261 (citation omitted)
(finding system for automatic record keeping of bank checks and deposits
obvious in view of nature of extensive use of data processing systems in
banking industry and "closely analogous" patent for an automatic data
processing system used in a large business organization for keeping and
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, 383 U.S. at 12, 148 USPQ at
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