TC 2600

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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 Nakanos 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 Haradas
bioauthentication device for Nakanos 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 drivers 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 Daviss
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 polytetrafluoroethylen
e (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)