Ex Parte Dombrowski - Page 9



            Appeal 2007-1917                                                                                
            Application 10/222,660                                                                          
            also KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391 (“While the sequence of these                    
            questions might be reordered in any particular case, the [Graham] factors continue              
            to define the inquiry that controls.”)                                                          
                   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.”  KSR, 127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing Graham v.                      
            John Deere Co., 383 U.S. 1, 12 (1966) (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.                              

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