Appeal 2007-1557
Application 10/943,536
KSR 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
without an explicit application of the teaching, suggestion, motivation test. In
particular, the Supreme Court reaffirmed 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. See also Great Atlantic & Pacific Tea Co. v.
Supermarket Equipment Corp., 340 U.S. 147, 151, 87 USPQ 303, 305 (1950)
(citing the negative rule accrued from many litigations that “[t]he mere aggregation
of a number of old parts or elements which, in the aggregation, perform or produce
no new or different function or operation than that theretofore performed or
produced by them, is not patentable invention.”) (internal quotations omitted);
Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 452-53 (1976)
(concluding that when a patent “simply arranges old elements with each
performing the same function it had been known to perform,” the combination is
obvious).
The Supreme Court thus articulated one possible framework for applying the
Graham factors to determine whether a claimed invention is obvious. To reject a
patent under this rationale requires the Examiner to make the following factual
findings during the Graham factor analysis: (1) each of the claimed elements is
found within the scope and content of the prior art; (2) one of ordinary skill in the
art could combine the elements as claimed by known methods; and (3) one of
ordinary skill in the art would recognize that the capabilities or functions of the
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