Appeal 2007-1792
Application 10/050,834
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
Anderson’s-Black Rock are illustrative – a court must ask whether the
improvement is more that the predictable use of prior art elements according to
their established function.” Id. at 1740, 82 USPQ2d at 1396.
The Supreme Court stated that “[f]ollowing these principles may be more
difficult in other cases than it is here because the claimed subject matter may
involve more than the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
improvement.” Id. The Court explained,
Often, it will be necessary for a court to look to
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