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Ex parte Catan: Obviousness at the USPTO in electrical engineering

July 19, 2007
Post by Blog Staff

In its third opinion of the day designated precedential, the Board of Patent Appeals and Interferences once again affirmed an examiner's obviousness rejections. Specifically, the Board found that Appellant's apparatus incorporating bioauthentication and a consumer electronics device was an obvious solution to a known problem, as all elements of the claims other than the bioauthentication device were found in one prior art reference, a second reference disclosed the bioauthentication devices in a related context, and a third disclosed that they could be substituted for each other. The BPAI appears to have fully embraced its new "flexibility" in determining obviousness in light of the Supreme Court's recent decision in KSR.

Update (10:00 AM): The USPTO is providing mandatory "KSR training" for all its examiners over the course of the next several weeks. So, expect all the juicy quotes from KSR that have appeared in these three precedential opinions to start showing up in office actions soon.

Further update (7/23): The USPTO has now confirmed the upcoming training on its website, also noting that draft final guidance for examiners has been submitted to the OMB for review. Maybe KSR will be a sea change after all.

More details of Ex parte Catan after the jump.The Appellant's claimed invention combined a consumer electronics device—comprising a processor, a memory and a communications link—and bioauthentication means, such as a fingerprint sensor or voice sensor. The purpose of the device is to give a user of an account the ability to grant sub-users permission to purchase items over a communication network up to a pre-set maximum credit limit. The bioauthentication means provides security and the ability to ensure that certain services are only to available to specific users.The rejections were based on three prior art patents, Nakano, Harada, and Dethloff. The Board found that Nakano disclosed every element of the claimed invention other than the bioauthentication device, Harada disclosed use of a bioauthentication device on a consumer electronics device, and Dethloff taught that it was known in the art to substitute traditional PIN authentication mechanisms with bioauthentication mechanisms for use in accessing credit.Moving to the significant portion of the opinion, the Board gave strict adherence to the KSR mandate regarding the role of the TSM test. The Board found that the claim at issue goes to a structure already known in the prior art and that the structure was altered by the substitution of one known element (bioauthentication) for another known element (password authentication). The Board reiterated that although TSM was helpful, an obviousness analysis "need not seek out precise teachings" and a court "can take account of the inferences and creative steps that a person of ordinary skill in the art would employ."Also of significance to the Board was that the combination of the bioauthentication means with a consumer electronics device produced no unexpected results. As stated by the Board:

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. Where, as here "[an application] claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result," KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1395 (citing United States v. Adams, 383 U.S. 50-51, 148 USPQ 479, 483 (1966)). In that regard, Appellant has provided no evidence that replacing Nakano's manual authentication means with Harada's known bioauthentication means yields an unexpected result or was beyond the skill of one having ordinary skill in the art.
As a result, the Board affirmed the obviousness rejection.Interestingly, as with another of the three decisions made precedential today, Ex parte Smith, the Board also cited to the Federal Circuit's recent Leapfrog decision. The Board stated:
As in Leapfrog, the device defined by claim 5 is an adaptation of an old invention (Nakano) using newer technology that is commonly available and understood in the art (Harada). Adding bioauthentication to the Nakano device does no more to Nakano’s device than it would do if it were added to any other device. The function remains the same.

As a result, it now seems clear that more evidence will have to be shown to rebut a prima facie case of obviousness at the USPTO, whether it be unexpected results, a synergistic effect, or other secondary indicia. It appears patent applicants are going to have a more difficult road ahead.To read the full decision in Ex parte Catan, click here.

The Patent Prospector blogs about the trio of Board cases here.


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