Ex Parte Ulrich et al - Page 7



            Appeal 2007-2869                                                                                
            Application 10/286,535                                                                          
            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:                                                            
                         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.                              
                   The Supreme Court stated that “[f]ollowing these principles may be more                  
            difficult in other cases than it is here because the claimed subject matter may                 
            involve more than the simple substitution of one known element for another or the               
            mere application of a known technique to a piece of prior art ready for the                     
            improvement.”  Id.  The Court explained,                                                        
                         Often, it will be necessary for a court to look to                                 
                         interrelated teachings of multiple patents; the effects of                         
                         demands known to the design community or present in                                
                         the marketplace; and the background knowledge                                      
                         possessed by a person having ordinary skill in the art, all                        
                         in order to determine whether there was an apparent                                
                         reason to combine the known elements in the fashion                                
                         claimed by the patent at issue.                                                    

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