Appeal 2007-1548
Application 10/702,346
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.” KSR, 127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing Graham, 383
U.S. at 12, 148 USPQ at 464 (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.
The Supreme Court stated that there are “[t]hree cases decided after Graham
[that] illustrate the application of this doctrine.” Id. at 1739, 82 USPQ2d at 1395.
“In United States v. Adams, … [t]he Court recognized that when a patent claims a
structure already known in the prior art that is altered by the mere substitution of
one element for another known in the field, the combination must do more than
yield a predictable result.” Id. at 1739-40, 82 USPQ2d at 1395. “Sakraida and
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