Appeal 2007-2446
Application 09/817,998
PRINCIPLES OF LAW
On the issue of obviousness, the Supreme Court has recently stated
that “the obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation.” KSR Int’l
Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (U.S. 2007). Further, the Court
stated “[t]he combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739 (U.S. 2007).
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. . . . [A]
court must ask whether the improvement is more than the predictable
use of prior art elements according to their established functions.
Id. at 1740. “One of the ways in which a patent’s subject matter can be
proved obvious is by noting that there existed at the time of the invention a
known problem for which there was an obvious solution encompassed by the
patent’s claims.” Id. at 1742.
ANALYSIS
Rejection of claims 1 through 11, 15 through 16, 19 through 21, and
23 through 25 under 35 U.S.C. § 103 (a).
Appellant’s arguments have not persuaded us that the Examiner erred
in finding that the combination of the references teaches the claimed step of
charging the recipient for delivering the mail in the manner specified by the
recipient to the carrier. We find that Kuebert teaches that the user of the
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