Appeal 2007-2140
Application 09/892,790
Patent 5,917,679
art,” id. at 1739, 82 USPQ2d at 1395. In particular, the Court 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 stated that there are
“[t]hree cases decided after Graham [that] illustrate 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. “In Anderson’s-Black Rock, Inc. v.
Pavement Salvage Co., … [t]he two [pre-existing elements] in combination
did no more than they would in separate, sequential operation.” Id. at 1740,
82 USPQ2d at 1395. “[I]n Sakraida v. AG Pro, Inc., … the Court derived
from the precedents the conclusion that when a patent simply arranges old
elements with each performing the same function it had been known to
perform and yields no more than one would expect from such an
arrangement, the combination is obvious.” Id. at 1740, 82 USPQ2d at
1395-96 (internal quotation omitted). The principles underlining these cases
are instructive when the question is whether a patent application claiming
the combination of elements of prior art is obvious.
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
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