Appeal 2007-2542
Application 10/623,891
suggestion, and motivation, or by overemphasis on the importance of
published articles and the explicit content of issued patents.” KSR, 127 S.
Ct. at 1741, 82 USPQ2d at 1396. “[W]hen 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 (quoting Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449,
543 (1976)).
In this case, the REV LTR present in the claimed Pac I fragment was
known prior to the application filing date (Specification 20: ¶ 69).
Appellants use it for the same function as the REV LTR described in Witter
’97. There is no evidence of record that the LTR provided by the Pac I
fragment behaves any differently than the LTR of Witter ’97. Accordingly,
we find that the use of the Pac I fragment is no more than the conventional
use of a known prior art LTR for its expected function as taught by Witter
’97. See KSR, 117 S. Ct at 1740, 82 USPQ2d at 1396 (“[W]hen the question
is whether a patent claiming the combination of elements of prior art is
obvious, . . . a court must ask whether the improvement is more than the
predictable use of prior art elements according to their established
functions.”). For the foregoing reason, we affirm the rejection of claim 3.
Claim 10 falls with claim 3 because separate reasons for its patentability
were not provided. See 37 C.F.R. 41.37(c)(1)(vii).
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: September 9, 2013