Recent Precedential Board Decisions Relating to Obviousness After KSR

Ex Parte Smith

In Ex Parte Smith, 83 U.S.P.Q.2d 1509 (BPAI 2007) (precedential), the Board affirmed the examiner’s rejection of claims based on anticipation based upon inherency, and obviousness in light of KSR v. Teleflex, 127 S.Ct. 1727, 82 U.S.P.Q.2d 1385, (2007).  In Smith, the invention was a pocket insert for a book where the pocket was for supplemental material that cannot be easily bound to the book binding (i.e., a disk or CD). 

Obviousness Rejection of Claims 1 and 10

On appeal, claim 1 was rejected as obvious in light of two patents: U.S. Patent No. 5,540,513 (the Wyant patent) and U.S. Patent No. 1,495,953 (the Dick patent).  Claim 10 was rejected as obvious in light of the Wyant patent, the Dick patent, and U.S. 4,965,948 (the Ruebens patent).

In reviewing the law of obviousness, the Board applied the test for obviousness in light of the Supreme Court’s decision in KSR v. Teleflex, 127 S.Ct. 1727, 82 U.S.P.Q.2d 1385, (2007) that “the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”  Moreover, the Board noted that, in applying the test for obviousness after KSR, the Supreme Court requires that “a court must ask whether the improvement is more than the predictable use of prior art elements according to their established function.”  Lastly, the Board relied upon the Federal Circuit’s recent decision in Leapfrog Ent., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161, 82 U.S.P.Q.2d 1687, 1690-91 (Fed. Cir. 2007) to require the patent owner to present evidence to rebut evidence that a particular combination would have been common sense.  

1.       Analysis of Claim 1:

Claim 1 recites “continuous two-ply seams”, which the applicants argued was not suggested in the prior art pocket inserts.  The finding of fact showed that the Wyant patent taught forming a pocket insert with “two glued, two-ply seams separated by a folded edge,” and thus did not have continuous seams around the edge of an insert pocket.  The Dick patent taught another way to form the seams using a two-ply pocket formed by securing three edges of two sheets with a continuous two-ply team by stitching or otherwise securing the edges.  Thus, both the Dick patent and the Wyant patent teach predictable results using different mechanisms for forming a pocket of an insert.

The Board found that the combination of the Wyant and Dick patents would be obvious to a practitioner because: (1) each of the claimed elements is within the prior art, (2) one skilled in the art could have combined the elements known at the time, and (3) it would been recognized to yield predictable results.  The Board did not rely on an explicit teaching as to why the seal in the Wyant patent should be combined with the continuous seal in the Dick patent.  Instead, the Board relied upon the Supreme Court’s decision in KSR in concluding that the “substitution of the continuous, two-ply seam of Dick for the folded seam of Wyant thus is no 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 improvement.’”  The Board took note that the applicants did not provide contrary evidence that it would have been difficult or uniquely challenging to use the continuous seam taught by the Dick patent with the pocket taught by the Wyant patent.

The Board next rejected the applicant’s argument that the Wyant patent teaches away from the Dick patent.  The applicant claimed that the use of the Dick patent seams would render the Wyant patent unusable for its primary purpose (selectively foldable tabs).  However, the examiner found, and the Board agreed, that using the construction of the Dick patent would allow the possibility of tabs foldable along the perimeter as in the Wyant patent such that the modification would not render the combination unsuitable.  While the Wyant patent did not specifically describe this possibility, there was no suggestion or requirement that this method was the only method.  Further, the Wyant patent did not actually teach against the use of a pocket constructed on one side surface of a base sheet, on which the examiner relied.  Instead, the Board held that merely because the “art is silent on the capabilities or function of any particular item, that is not teaching away from its use.”  Thus, the Board held that this minor modification of the method described in the Wyant patent fell within the type of “common sense” modification that one skilled in the art would have made, and is thus consistent with the Supreme Court’s decision in KSR.   As such, the Board found that there was sufficient evidence to maintain the prima facie obviousness rejection since selection between the two-ply seam of Dick and folded seam of Wyatt was “a choice between viable alternatives.”

2.       Analysis of Claim 10:

The applicants further argued that the combination of the Wyant patent, the Dick patent, and the Ruebens patent did not disclose or suggest that “the base sheet and the pocket sheet are further adhered to one another along a strip parallel to the third and fourth edges of the sheets, so as to separate two pockets formed between the sheets” as recited in claim 10.  In finding claim 10 obvious in light of these references, the Board found that the Ruebens patent discloses a photo album having a top sheet adhered to a base sheet along a strip to separate a pocket sheet into two pockets.  Using this same adhesive strip to create separate pockets is the identical use as was in the prior art and would yield predictable results.  The Board also highlighted that it was not a unique challenge or difficulty, and that the use of a line of adhesive to separate a pocket into two in a photo album would be recognized to improve similar devices.  Thus, based upon the Supreme Court’s ruling in KSR, as claim 10 recites elements well known in the art and for which the combination was within the skill of one of ordinary skill in the art yielding predictable results, claim 10 was obvious.

Anticipation Rejection of Claim 35

Claim 35 was rejected under 35 U.S.C. §102(b) as anticipated by U.S. Patent No. 5,141,252 (the Michlin patent).  Claim 35 recited, among other features, “an adhesive between the base sheet and the pocket sheet to bond the base sheet to the pocket sheet to form a pocket with an opening facing the binding edge, the pocket insert having a thickness rendering the insert passable through a copier or printer in sequence with a sheet of paper having the given width and length, the thickness of the pocket insert being at its maximum equal to a combined thickness of the base sheet single thickness, the pocket sheet single sheet thickness and the adhesive.”

In order to further understand the recited “thickness rendering the insert passable through a copier or printer in sequence,” the Board reviewed the Specification.  The Specification discloses a method of creating a pocket insert capable of being collated along with other materials in a copier, but “provides no detailed description of what thickness is required to render the insert passable through a copier or printer in sequence with a sheet of paper other than to say that ‘the pocket insert should be assembled of standard weight paper.’”  (Finding of fact 6). 

In affirming the examiner’s rejection, the Board found that, for purposes of inherency, a result must necessarily follow from the disclosed prior art.  In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349, 64 U.S.P.Q.2d 1202, 1206 (Fed. Cir. 2002).  The fact that a result may occur is not sufficient for purposes of inherency since “‘[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient.’ In re Robertson, 169 F.3d 743, 745, 49 U.S.P.Q.2d 1949, 1951 (Fed. Cir. 1999).”  In reviewing the record in light of this test, the Board noted that the defined thickness in the claim is simply a thickness using standard materials and is not a specific thickness.  Similarly, the Michlin patent discloses a preprinted insert which necessarily was printed using a printer.  As such, the fact that the Michlin patent discloses a preprinted insert which otherwise meets the remaining features established a prima facie case of anticipation based upon inherency.   Since there was no evidence to rebut this prima facie case of anticipation in order to show that the disclosed preprinted insert did not inherently disclose such a feature, claim 35 was properly rejected under 35 U.S.C. §102(b) as being inherently anticipated by the Michlin patent.

Ex Parte Catan

 In Ex Parte Catan, 83 U.S.P.Q.2d 1569  (BPAI, July 3, 2007) (precedential), the Board affirmed a rejection of the applicant’s claims based on obviousness under 35 U.S.C. §103 in light of the Supreme Court’s decision in KSR v. Teleflex, 127 S.Ct. 1727, 82 U.S.P.Q.2d 1385, (2007).  The applicant claims a consumer electronics device which uses bioauthentication for authenticating use of a sub-credit line account.  Applicant’s claim 5, on which the applicant’s application stands or falls, reads:

5.   A consumer electronics device, comprising: A memory which stores account information for an account holder and sub-credit limits and bioauthentication information for authorized users of the account; A bioauthentication device which provides bioauthentication information to the memory; A communication link; and A processor, which compares received bioauthentication information to stored bioauthentication information to detect a match, and finds an associate sub-credit limit corresponding to the received bioauthentication information, to enable a purchase over the response network via a communication network up to a maximum of the sub-credit limit, the processor sending the account holder information over the communication link only if the match is detected and the sub-credit limit is not exceeded.

The examiner rejected claim 5 in light of three prior patents: U.S. Patent 5,485,260 (the Nakano patent), U.S. Patent No. 4,837,422 (the Dethloff patent), and U.S. Patent No. 5,721,583 (the Harada patent).  The examiner found that the Nakano patent discloses all of the elements except that Nakano’s authentication was using a PIN, whereas the claims recite bioauthentication.  Further, the examiner found that the Nakano patent does not disclose a local storage device for memory, where the memory is part of the consumer electronics device. 

However, the Board rejected the examiner’s narrow interpretation of the recited location of the memory within a consumer electronics device.  Specifically, the Board found that the preamble does not require a unitary body.  Therefore, claim 5, when read broadly, did not require a local storage for memory.  The Board relied upon the frequency with which various components in consumer electronics devices are not in unitary devices, such as where a base station is sold with a remote control.  The Board further relied upon the Specification, which describes a remote server processing the bioauthentication data such that the device itself is not necessarily limited to a single body.  Without this requirement for a local memory as opposed to a memory, the Board found that the Nakano patent disclosed a memory within the meaning of claim 5.  Hence, the only limitation not found in the Nakano patent is that Nakano’s authentication is provided by a password and not a bioauthentication device as in claim 5.

The examiner also found that the Harada patent discloses a remote control which uses bio-authentication information in the form of a fingerprint gathered on the remote itself.  Thus, the Harada patent discloses “the use of a bioauthentication device (fingerprint sensor) on a consumer electronics device (remote control) to provide bioauthentication information (fingerprint)” 

The examiner also found that the Dethloff patent discloses a consumer electronics device which uses a voice sensor as bioauthentication in use with sub-account activation.  The Dethloff patent, therefore, teaches “substitut[ing] a PIN authentication with bioauthentication to enable a user to access credit via a consumer electronics device.”

The examiner’s finding of fact also concluded that Dethloff and Nakano indicated the art suggested a common usage of personal codes or personal identification numbers to identify or authenticate users and that Harada and Dethloff indicated one of ordinary skill would be familiar with using bioauthentication interchangeably with PINs to authenticate users.

In affirming the examiner’s decision to reject the claims, the Board reviewed the “functional approach” of Hotchkiss, 11 How. 248 as reaffirmed by the Supreme Court in KSR v. Teleflex, 127 S. Ct. 1728, 82 U.S.P.Q.2d 1385 (2007).   Under this functional approach, the obviousness inquiry uses a flexible view that a combination patent is not obvious when “the improvement is more than the predictable use of prior art elements according to their established functions,” When a patent is altered by substitution of one element for another known in the field, “the combination must do more than yield a predictable result” in order to be non-obvious.  United States v. Adams, 383 U.S. 39, 40, 148 USPQ 479, 480 (1966) (cited with approval in KSR as an illustrative example of the functional approach). 

In reviewing the examiner’s decision, the applicant made no suggestion that using bioauthentication in this invention yielded an unexpected result or that it was beyond the skill of one having ordinary skill in the art.  The Specification did not contain a detailed description of implementation in hardware or software for the device, and was written in generalities.  Such generality supported the finding that including a bioauthentication device into a consumer electronic device was not uniquely challenging. 

In light of the Nakano and Harada patents, the Board found it was obvious to “update the Nakano device with the modern authentication components of the Harada bioauthentication means and thereby gaining, predictably, the common understood benefits of such adaptation, that is, a secure and reliable authentication procedure.”  The Board further supported its decision because the Dethloff patent shows substituting PIN authentication with voice authentication, which is a form of bioauthentication.  Moreover, there was evidence that bioauthentication was known in the art of authentication at the time of the invention as well as the interchangeability and substitutability was known in the art.  Thus, this known substitutability indicated it was known to replace PIN authentication with bioauthentication for the purpose of enabling a user access to credit.

The Board rejected applicant’s “repeated” arguments that there must be a teaching, suggestion, or motivation (TSM) in the prior art directing one skilled to make the improvement.  The TSM test was recognized as useful by the Supreme Court in KSR, but was not a necessary finding to support obviousness.  Instead, a court may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”  As such, while the TSM test was not required to find obviousness, the Board went on to find a motivation to use bioauthentication in light of the numerous advantages of bioauthentication over other forms of authentication as disclosed in the Harada patent.  These advantages included reliability, and ensuring use by an authorized user.  The finding of facts also found that the advantages of bioauthentication included protection against theft and that it was not susceptible to a user’s forgetfulness.  Thus there was motivation to combine because “Dethloff teaches that one can substitute bioauthentication information for PIN information, and Harada teaches that it was a common problem at the time of the invention to create a remote control that would reliably ensure that the appropriate person was given access to the system.  The use of a fingerprint scanner, such as disclosed in Harada, was an obvious solution to provide a more reliable means of identification than the PIN code in Nakano.”  Thus, the Board found that there was a motivation to make the combination, which further supported the obviousness rejection.


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