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TC 2600 KSR Examples PowerPoint PPT Presentation

TC 2600 KSR Examples Exemplary Rationales The following are some rationales which may be used when formulating a 103 rejection: (1)Combining prior art elements according to known methods to yield predictable results.

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TC 2600 KSR Examples

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TC 2600

KSR Examples


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Exemplary Rationales

The following are some rationales which may be used when formulating a 103 rejection:

(1)Combining prior art elements according to known methods to yield predictable results.

(2) Simple substitution of one known element for another to obtain predictable results.

(3) Use of known techniques to improve similar devices (methods or products) in the same way.

(4) Applying a known technique to a known device (method or product) ready for improvement to yield predictable results.

MPEP 2141 III & MPEP 2143


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Exemplary Rationales

The following are some rationales which may be used when formulating a 103 rejection:

(5) ”Obvious to try” – choosing from a finite number of identified, predictable solutions.

(6) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces/market place incentives if the variations are predictable to one of ordinary skill in the art.

(7) The TSM test. (Although the Supreme Court cautioned against an overly rigid application of TSM, it also recognized that TSM was one of a number of valid rationales that could be used to determine obviousness)

MPEP 2141 III & MPEP 2143


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Example 1 - The Claim

  • Claim 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 associated sub-credit limit corresponding to the received bioauthentication information, to enable a purchase over the response network via the 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.


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Example 1 - The Facts

Nakano discloses all of the elements of claim 5 except for Nakano’s authentication information is not provided by a bioauthentication device

Harada discloses bio-authentication information as the identification information where the bio-authentication device provides the bio-authentication information that is a fingerprint further where the sensor is on the remote control.


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Example 1 - The Facts

  • A common usage of personal codes or personal identification numbers (PINs) to identify or authenticate users.

  • The art further shows that one of ordinary skill in the consumer electronic device art at the time of the invention would have been familiar with using bioauthentication information interchangeably with or in lieu of PINs to authenticate users.

  • It is also clear from an examination of the prior art that those of ordinary skill in the consumer electronic device art at the time of the invention would have been familiar with using bioauthentication devices to obtain bioauthentication information to identify users


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Example 1 - The Rationale

Since each individual element and its function, as described in claim 5, are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and that of the prior art rests not on any individual element or function but in the very combination itself; that is, in the substitution of Harada’s bioauthentication device for Nakano’s manual authentication means.

(2)Simple substitution of one known element for another to obtain predictable results.


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Example 2 - The Claim

Claim 1. A communication device comprising:

a housing;

a sensor disposed on a surface of the housing and responsive to a user macro-manipulation of the communication device to provide a sensor output, the sensor comprising a pair of spaced apart carbon fiber strips disposed on the housing; and

a processor disposed within the housing, the processor operable responsive to receiving the sensor output to initiate a predefined communication associated with receipt of the sensor output.


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Example 2 - The Facts

Davis teaches a wireless telephone including a housing, and a sensor on the surface of the housing, responsive to user macro-manipulation (squeezing), to provide a sensor output . In Davis, when the user grasps the housing, the conductive nature of the human hand causes a capacitance switch to completes a circuit, which is detected by a switch detector. In response, the switch detector sends a signal to the controller. Davis teaches that the wireless phone may be controlled to initiate a communication (“send”), end a communication (“standby” or “on hook”), or redial a call responsive to receipt of the signal from the switch detector.

Naboulsi teaches a vehicle safety system including a pair of sensors mounted on a steering wheel, which sensors are capable of sensing a physiological condition of the driver, including electrical skin conductivity of the driver’s hand while gripping the steering wheel. Naboulsi gives several examples of types of sensors that convert pressure to an electrical signal, one being a carbon-type transducer. Naboulsi teaches a system sensors will enable use of a wireless telephone.


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Example 2 - The Rationale

Naboulsi shows that other sensors, such as “carbon-type,” may be used to effect wireless telephone operation in the same way that Davis’s capacitive sensors do. Davis is the reference relied upon to teach wireless telephone functions. As such, Naboulsi fairly suggests modifying Davis in order to arrive at the claimed invention.

(2)Simple substitution of one known element for another to obtain predictable results.

But ...


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Example 2 - Additional Fact

Davis and Naboulsi does not explicitly teach “carbon fiber” strips

Carbon fiber sensors were well known for performing the same function as capacitive-type sensors.

Kim teaches that it is known to manufacture a transducer that converts pressure to electrical energy using carbon fiber materials.


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Example 2 - The Rationale

Davis and Naboulsi does not explicitly teach “carbon fiber” strips

  • It would have been obvious to use a sensor made of “carbon fiber” rather than a “carbon-type” sensor, because

  • the modification of Davis to use carbon fiber sensors rather than capacitive sensors would have constituted the mere arrangement of old elements with each performing the same function it had been known to perform, the combination yielding no more than one would expect from such an arrangement

(1)Combining prior art elements according to known methods to yield predictable results.

But …


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Example 2 - Additional Fact

Davis and Naboulsi does not explicitly teach “carbon fiber” strips

Carbon fiber has known advantages such as strength and light weight.


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Example 2 - The Rationale

Davis and Naboulsi does not explicitly teach “carbon fiber” strips

The use of carbon fiber sensors rather than “carbon-type” would have been a predictable modification – carbon fiber has known advantages such as strength and light weight, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way.

(3)Use of known techniques to improve similar devices (methods or products) in the same way.


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Example 3 - The Claim

  • Claim 1. An information handling system comprising:

  • a housing;

  • electronic components disposed in the housing and operable to generate audio information output;

  • one or more speakers disposed in the housing and operable to generate audible audio output from the audio information;

  • a cord reel integrated in the housing and operable to retract and extend a cord;

  • an earphone cord interfaced with the electronic components and with the cord reel;

  • earphones interfaced with the earphone cord and operable to generate audible audio output from the audio information;

    • earphones couplers associated with the earphone cord and operable to selectively couple or release the earphones and the earphone cord; and

  • an audio output selector interfaced with the cord reel and operable to select the speakers to generate audible output if the earphones cord is retracted in the cord reel and to select the earphones to generate audible output if the earphone cord is extended from the cord reel.


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Example 3 - The Facts

Grasso discloses an information handling system comprising: a housing; electronic components disposed in the housing and operable to generate audio information output ; one or more speakers disposed in the housing and operable to generate audible audio output from the audio information; a cord reel integrated in the housing and operable to retract and extend a cord; an earphone cord interfaced with the electronic components and with the cord reel ; earphones interfaced with the earphone cord and operable to generate audible audio output from the audio information; and an audio output selector interfaced with the cord reel and operable to select the earphones to generate audible output if the earphone cord is extended from the cord reel . Grasso disclose in the background that when earphones are selected speakers are disabled and vice versa.

Doss discloses comprising earphone couplers associated with the earphone cord and operable to release the earphones from the earphone cord.


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Example 3 - The Rationale

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.

An artisan would have appreciated the convenience of the “two member ‘no-look’ quick connect/disconnect connector” taught by Doss . In particular, an artisan having ordinary skill and common sense would have clearly recognized that a rider dismounting a motorcycle would need to quickly disconnect the wired helmet from the coiled cable connected to the motorcycle wiring harness.

(6) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces/market place incentives if the variations are predictable to one of ordinary skill in the art.


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Example 4 - The Claim

Claim 1. An electric circuit interrupter comprising, in combination, means between which an arc is formed on interruption of the circuit, and a structure adapted to confine said arc having its arc confining surface formed of fluorinated ethylene propylene.


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Example 4 - The Facts

Lindell teaches an electric circuit interrupter having an arc-confining surface is of fiber and methyl methacrylate.

Browne et al. teach an electric circuit interrupter having an arc-confining surface is of polytetrafluoroethylene (TEFLON®).

Gordon patent and the sales bulletin were cited to show the obviousness of substituting FEP in the arc-confining surface for the materials used in the Lindell and Browne et al. circuit breakers. Gordon teaches that FEP approaches TEFLON® in its desirable qualities and is more tractable and that each can be used as electrical insulation. The DuPont sales bulletin reports essential equivalence in the “outstanding electrical properties” of FEP and TEFLON®. It discloses that FEP has high dielectric strength and that “like TEFLON® TFE resins, TEFLON®100 has good arc resistance and will not carbon track.”


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Example 4 - The Rationale

The disclosure in the DuPont bulletin would at least suggest to one skilled in the art to try fluorinated ethylene propylene in circuit breakers of the type shown in Lindell and Browne et al.

(7) The TSM Test


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Example 5 - The Claim

Claim 1. A management process operating on a computer system that has cached documents stored on the computer system, the process comprising:

displaying cache status information about the cached documents when a user digitally points to an address associated with one or more of the cached documents;

displaying a percentage of the document that was previously cached with the cache status information; and

allowing the user to digitally point to selected designated portions of the cached document and only loading the designated portions of the cached document.


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Example 5 - The Facts

Gong discusses the problem of old information displayed on a Web page, noting that an inexperienced user may be unaware that a Web page contains "old" information retrieved from cache rather than only "new" information. Gong teaches that a browser usually retrieves a Web page either entirely from cache, or partly from cache and partly from the originating network server.  Gong explains that partial retrieval usually occurs automatically (i.e., without explicit user request). Gong teaches speeding up the operation of a browser by using caching techniques Gong also teaches that a status icon may be incorporated into a browser reload selection button to indicate that data in a currently viewed page is old or at least partially old and to make selection of the reload function by the user a natural extension of the status indication.  In addition, Gong does not teach that the user may decide to retrieve a Web page partly from cache and partly from the originating network server.


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Example 5 - The Facts

Acharya broadly teaches giving the user control over the process of selecting portions of a Web page for retrieval. After discussing the problem of latency, Acharya teaches that users are likely to welcome an option to retrieve a selected version of a file that can be provided relatively quickly. Acharya also teaches that users are likely to choose to reject some files, receive a selected version of other files fairly quickly, and would be willing to wait longer for a selected version of other files. Acharya further teaches that there are reasons other than latency why users desire control. In addition, Acharya teaches the technique of caching as a solution to the problem of latency. However, Acharya does not teach that the file selected by the user is a cached file and does not teach that the selected file that is transmitted to the user is a cached file.


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Example 5 - The Rationale

The prior art also teaches the known technique of giving the user control over selection of a portion of a Web page. A person of ordinary skill in the art would have recognized that applying the known technique of giving the user control over the selection of a portion of a Web page would have yielded predictable results and would have improved the Web browser of Gong when selecting and loading cached Web pages. In addition, allowing the user to select and load portions of the cached Web page follows naturally and directly from Gong's teaching of a Reload button that makes "selection of the reload function a natural extension of" the Web page status indication.

(4) Applying a known technique to a known device (method or product) ready for improvement to yield predictable results.

OR


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Example 5 - The Rationale

A person of ordinary skill in the art would have had good reason to pursue the known options of giving the user control over selecting and loading documents when selecting and loading portions of a cached document. It would require no more than "ordinary skill and common sense," to give the user (rather than the computer program) control over digitally pointing to selected portions of a cached Web page and loading only those designated portions.

(5)”Obvious to try” – choosing from a finite number of identified, predictable solutions.

OR


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Example 5 - The Rationale

The design incentive of solving the problem of latency would have prompted one of ordinary skill in the art to implement a predictable variation of the prior art system of Gong by applying the known principle of giving control to the user, disclosed in Acharya, to allow the user, rather than the browser, to point to selected designated portions of a cached Web page and only load those designated portions. The differences between the claimed invention and the prior art are encompassed by applying the known principle of giving control to the user to the system of Gong.

(6) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces/market place incentives if the variations are predictable to one of ordinary skill in the art.


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TC 2600

The Cases:

Ex parte STEFFEN RING - Appeal 2007-0481 (SN: 10/654,049)

Ex parte CAROLYN RAMSEY CATAN - Appeal 2007-0820 (SN: 09/734,808)

Ex parte RUDOLF BENDIXEN and MICHAEL BURCHETT - Appeal 2007-1780 (SN: 10/340,127)

Ex parte GERALD F. MCBREARTY, SHAWN P. MULLEN, and JOHNNY M. SHIEH - Appeal 2007-1340 (SN: 09/996,125)

In re LINDELL, 155 USPQ 521 (C.C.P.A. 1967)


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