In ClassCo, Inc. v. Apple, Inc., Appeal No. 2015-1853, the Federal Circuit affirmed the Board’s conclusion of obviousness.

The Federal Circuit rejected ClassCo’s argument that, under KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), a combination of references is obvious only if it unites old elements without changing their respective functions.  Rather, KSR instructs that the obviousness analysis requires a “flexible approach,” recognizing that familiar items may have obvious uses beyond their primary purposes.

The Federal Circuit also found that the Board erred in giving no weight to ClassCo’s evidence of praise and commercial success. ClassCo’s evidence of praise related to features that were not available in the prior art but were within the scope of the claims. Further, ClassCo’s marketed product embodied the claimed features, and therefore its commercial success is of some weight.  But the Federal Circuit found no error in the Board’s ultimate conclusion because ClassCo’s evidence of secondary considerations was not strong enough to overcome the prior art under the first three Graham factors.