Appeal 2007-2149
Application 10/224,099
Appellant goes further, however, in alleging that the functionality of
drivers is “vastly different” from that of firmware. (Appeal Br. 8-10.) If the
remarks are intended to represent an argument for patentability of claim 1,
Appellant seems to answer the argument in the Reply Brief (at 4), in
acknowledging that a printer driver and firmware are both software. Both
references are directed to ensuring that a user has the latest version of
software. Appellant submits (Reply Br. 4) that drivers and firmware are
distinct in storage location and functionality. As we have indicated,
however, Krishan discloses the claimed storage location. Claim 1 does not
specify the functionality of the firmware program, but is directed to updating
of the program to ensure possession of the latest version.
Moreover, in KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1739, 82
USPQ2d 1385, 1395 (2007), the Supreme Court emphasized “the need for
caution in granting a patent based on the combination of elements found in
the prior art,” 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 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, 148 USPQ 459, 464 (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:
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