More Post-KSR Combination Obviousness at the USPTO

In Ex Parte Catan (BPAI, July 3, 2007, per curium), the sole difference between Appellant's claim 5 and the teachings of Nakano was the use of bioauthentication in place of Nakano’s password authentication. Harada showed that it was known in the art at the time of the invention to use a bioauthentication device on a remote control to provide the bioauthentication information.

According to the precedential opinion,

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.

The Appellant’s own Specification only generally describes the idea of incorporating a bioauthentication device, such as a fingerprint sensor, into a consumer electronics device and the matching function needed to compare the scanned bioauthentication information with the stored bioauthentication information (e.g., Specification 6:6-7 and 6:17-7:2). The Specification does not provide a detailed description of the implementation in hardware or software of the bioauthentication device. Furthermore, Appellant’s Specification as well as Appellant’s arguments do not present any evidence that including the bioauthentication device into the consumer electronic device was uniquely challenging or difficult for one of ordinary skill in the art.

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. Predictably, bioauthentication adds greater security and reliability to an authorization process (FF 12). This variation on Nakano’s device, whereby the manual authentication means of the Nakano device is replaced with Harada’s bioauthentication means, appears to present no unexpected technological advance in the art. One of ordinary skill in the art of consumer electronic devices would have found it obvious to update the Nakano device with the modern authentication components of the Harada bioauthentication means and thereby gaining, predictably, the commonly understood benefits of such adaptation, that is, a secure and reliable authentication procedure (FF 12).

Appellant argues that the Examiner has failed to provide sufficient reasoning to reach a conclusion of obviousness based on the prior art (Appeal Br. 11-20). Appellant repeatedly argues for application of the teaching, suggestion, motivation (TSM) test, stating that "[t]here must be some suggestion or motivation, either in the references themselves, or in the knowledge generally available to one of ordinary skill in the art, to modify a reference or to combine reference teachings" (e.g., Appeal Br. 11). The Supreme Court noted in KSR that although the TSM test "captured a helpful insight," an obviousness analysis "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art
would employ." 127 S.Ct. at 1741, 82 USPQ2d at 1396.

The claim is to a structure already known in the prior art that is altered by the mere substitution of one known element for another element known in the field for the same function. The facts themselves show that there is no difference between the claimed subject matter and the prior art but for the combination itself. "[T]he mere existence of differences between the prior art and an invention does not establish the invention's nonobviousness. The gap between the prior art and respondent's system is simply not so great as to render the system nonobvious to one reasonably skilled in the art." Dann v. Johnston, 425 U.S. 219, 230, 189 USPQ 257, 261 (1976) (holding that claims directed to a machine system for automatic record keeping of bank checks and deposits were obvious in view of the use of data processing equipment and computer programs in the banking industry at the time of the invention in
combination with a prior art automatic data processing system using a programmed
digital computer for use in a large business organization). Appellant has presented no evidence that combining the Nakano device with the Harada bioauthentication means would have required anything more from one of ordinary skill in the art than to substitute one authentication means for a more advanced one. Accordingly, we hold that the subject matter of claim 5 would have been obvious to one of ordinary skill in the art given the teachings of Nakano and Harada.

Nonetheless, our holding is further buttressed by the teaching in Dethoff of the substitutability of a voice print authentication for a PIN authentication (FF 10). In particular, Dethloff teaches that it was known in the art at the time of the invention to substitute a PIN authentication with bioauthentication to enable a user to access credit (FF 10, 20).

Further, Harada provides sufficient motivation for one skilled in the art to use this bioauthentication information, such as a voice print or fingerprint, in lieu of a PIN in order "to prevent unauthorized tampering with [certain terminal setting] data by persons who may have access to the remote control apparatus," "to ensure that the type of service which is provided by a terminal apparatus to the users of its remote control apparatuses is selectively controlled in accordance with various different categories of uses, e.g.[,] adults and children," and "to reliably ensure that certain services which should be available only to a specific individual user … and which can be requested by operation of a remote control apparatus, will in fact be made available only to the appropriate individual, when a number of different individuals can use remote control apparatus to communicate with that same terminal apparatus" (FF 10). The use of a PIN code is not as reliable an identifier as bioauthentication information because the PIN can be stolen and used without the authorized user’s knowledge (FF 11). On the contrary, bioauthentication information, such as a fingerprint, unambiguously and reliably ensures that a specific authorized user is requesting the service (FF12). Further, use of a PIN code as an identifier is
not as desirable as bioauthentication information because the use of a PIN requires the user to remember the PIN code (FF 13).

Thus, one of ordinary skill in the art would have been motivated to combine
the bioauthentication device of Harada with the system of Nakano 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 of Nakano.

. . . The decision of the Examiner to reject of claims 5-11 and 13-16 under 35 U.S.C. § 103(a) as obvious over Nakano, Harada, and Dethloff is affirmed.