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Archived updates for Monday, February 04, 2008

Obviousness Training Examples for USPTO Business Methods Examiners

Thanks to the Patent Hawk for posting a copy of the "KSR Training Examples" for USPTO Techonolgy Center 3600 on Business Methods (corresponding USPTO PowerPoint presentation here).

The first example is a combination-type obvious rejection for the following claim


A remote banking system on the Internet comprising:

means for connecting a plurality of customer computers located at remote sites to a central computer associated with a bank;

means for allowing customers to access and retrieve selected information associated with their individual accounts;

means for permitting a customer to transfer funds from one account to another account through the use of said customer’s computer; and

means for purchasing mutual funds offered by said bank through the use of said customer computers.

where the prior art includes


Jones discloses a software packages for use on the Internet. The package allows a user to perform various functions remotely including accessing their accounts for balance information and to transfer funds from one account to another.

Smith discloses a bank being used to broker the purchase of various investments including stocks, bonds, mutual funds, futures over the internet.

and the example states that To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries by articulating the following:


(1) a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between
the claimed invention and the prior art being the lack of actual combination of
the elements in a single prior art reference.
It can be seen that each element claimed in taught in either Jones or Smith
(2) a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods and that in combination, each element merely would have performed the same function as it did separately;

Buying mutual funds over the internet (taught by Smith) does not change nor effect the normal functions of banking as taught by Jones. Accessing account information or transferring of funds from one account to another would be performed the same way even with the addition of buying mutual funds.

(3) a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable; and

Since the functionalities of the elements in Jones and Smith do not interfere with each other the results of the combination would be predictable.

(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness. The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention. ‘‘[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.’’ If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.

No additional findings are necessary since Jones and Smith show all the claimed
elements as combined.

Among the links provided in the examples,

  • In re Trans Holding Corp.:

"Case depended largely on a claim construction argument. The CAFC upheld the Board under the 'broadest reasonable interpretation rule'"

"This link provides three post KSR decisions on obviousness - Catan, Kubin, and Smith."

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