Ex Parte Murofushi et al - Page 13



             Appeal No. 2007-1530                                                                                      
             Application 10/095,112                                                                                    

             (4) objective indicia of non-obviousness.  DyStar Textilfarben GmbH & Co.                                 
             Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360, 80 USPQ2d 1641,                                  
             1645 (Fed. Cir. 2006) (citing Graham v. John Deere Co., 383 U.S. 1, 17, 148                               
             USPQ 459, 467 (1966)).                                                                                    
                    “The combination of familiar elements according to known methods is likely                         
             to be obvious when it does no more than yield predictable results.”).  Leapfrog                           
             Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161, 82 USPQ2d 1687, 1691                             
             (Fed. Cir. 2007) (quoting KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41,                          
             82 USPQ2d 1385, 1395 (2007)).  )).  “One of the ways in which a patent's subject                          
             matter can be proved obvious is by noting that there existed at the time of                               
             invention a known problem for which there was an obvious solution encompassed                             
             by the patent's claims.”  KSR, 127 S. Ct. at 1742, 82 USPQ2d at 1397.                                     
                    Discussing the obviousness of claimed combinations of elements of prior art,                       
             KSR explains:                                                                                             
                    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.                                  
                    Sakraida [v. AG Pro, Inc., 425 U.S. 273, 189 USPQ 449 (1976)] and                                  
                    Anderson's-Black Rock[, Inc. v. Pavement Salvage Co., 396 U.S. 57,                                 
                    163 USPQ 673 (1969)] are illustrative—a court must ask whether the                                 
                    improvement is more than the predictable use of prior art elements                                 
                    according to their established functions.                                                          
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