Appeal 2007-2149
Application 10/224,099
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.
As if recognizing the weakness of the position set out in the Appeal
Brief, Appellant adds a new argument in the Reply Brief (at 3-4). Appellant
seems to argue that Salgado cannot suggest automatically updating the
firmware program independently of a further software application for the
portable card, because the reference does not describe automatically
updating the printer driver “independently of a further software application.”
Appellant neglects to point out supporting disclosure in the
Specification for the “wherein” clause of claim 1. (See, e.g., Appeal Br. 2-3,
“Summary of Claimed Subject Matter). The recitation “independently of a
further software application for the portable card” appears, by its terms, to
be met by a further software application for the portable card such as an
application that uses the portable card to communicate with another device,
perhaps days after the firmware update. The update is thus “independent” of
a further software application for the portable card.
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Last modified: September 9, 2013