Ex parte Righi

The opinion in support of the decision being entered today
is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FABIO RIGHI
____________
Appeal 2007-0590
Application 09/872,4161
Technology Center 2600
____________
Decided: July 25, 2007
____________
Before MICHAEL R. FLEMING, Chief Administrative Patent Judge,
JAMES D. THOMAS, Administrative Patent Judge, FRED E.
MCKELVEY, Senior Administrative Patent Judge, MAHSHID D.
SAADAT, and ALLEN R. MACDONALD, Administrative Patent Judges.
MACDONALD, Administrative Patent Judge.
DECISION ON APPEAL
1 Filing date: June 1, 2001. The real party in interest is Digital Persona, Inc.

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Application 09/872,416
STATEMENT OF THE CASE2
Appellant appeals under 35 U.S.C. § 134 from a final rejection
of claims 1-27 entered July 13, 2005. We have jurisdiction under
35 U.S.C. § 6(b).
Appellant invented a system and method for using a biometric sensor
for notifying a user, in response to an activity on a system to which the
biometric sensor is coupled. (Specification 2:2-6). The claims set forth
Appellant’s claimed invention, which is a sensor system (claim 1), a
computer system coupled to the sensor system (claim 10), and a method of
using a biometric sensor for notification (claim 19).
Representative of the disclosed and claimed invention claims 1, 2, and
3 are reproduced below:
1. A sensor system comprising:
a biometric sensor including a sensing logic to detect biometric
data; and
a notification logic to display a selected one of a plurality of
visual notifications on the biometric sensor to a user, in response to a
particular computer activity on a system to which the biometric sensor
is coupled.
2. The sensor system of claim 1, further comprising:
an auto-launch logic to automatically launch an application
associated with the notification, if the user’s biometric data is detected
in conjunction with the visual notification.
3. The sensor system of claim 2, the auto-launch logic further to
insert a password and user name into the application when
appropriate.
2 Throughout our opinion, we shall make references to Appellant’s Appeal
Brief (“Br.”) filed on May 15, 2006, and Reply Brief (“Reply Br.”) filed on
September 28, 2006, and to the Examiner’s Answer (“Answer”) mailed on
July 28, 2006, for the respective details thereof.
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REFERENCES
The references relied upon by the Examiner in rejecting the claims on
appeal are as follows:
Randolph 	US 5,736,942 	Apr. 7, 1998
Lambert 	US 6,193,153 B1 	Feb. 27, 2001
Novoa 	US 6,636,973 B1 	Oct. 21, 2003
(Filed Sep. 8, 1998)
Claims 1, 2, 4-11, 13-20, and 22-27 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lambert and Randolph.
Claims 3, 12, and 21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lambert, Randolph, and Novoa.
Appellant contends that with respect to the combination of Lambert
and Randolph there is no suggestion of motivation to combine these
references (Br. 6). Specifically, Appellant contends:
(1) “[T]here is no teaching or suggestion within the references
to make the combination indicated by the Examiner.” (Br. 8:3-4).
(2) “The references do not disclose similar problems, nor do the
references disclose similar purposes.” (Br. 8:15-16).
(3) “[T]he Examiner attempts an impermissible reconstruction
of the invention based on hindsight.” (Br. 8:16-17).
Appellant further contends that, the even if combined, the references
fail to disclose, teach, or suggest each and every limitation of the
Applicant’s inventions. More specifically, Appellant contends:
(4) With respect to claims 1-2, 4-11, 13-20, and 22-27, “[t]here
is no suggestion in Lambert or Randolph that the system provide
visual notification in response to particular activity.” (Br. 11:2-3).
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(5) With respect to claims 2, 11, and 20, the references fail to
disclose “applications associated with the notifications” and thus,
“could not logically automatically launch an application associated
with a notification if biometric data is detected in conjunction with the
visual notification.” (Br. 14:2-6).
(6) With respect to claims 3, 12, and 21, Novoa discloses “[t]he
password is then inserted into a login application (Novoa, Figures 3
and 4)”, but Novoa “fails to describe ‘insert[ing] a password and user
name into the application when appropriate.’” (Br. 17:9-11).
We affirm.
ISSUES
Whether Appellant has shown that the Examiner erred in rejecting
claims 1-27 based on obviousness? The issues specifically turn on:
(A) Whether Appellant has established that the Examiner erred
in rejecting claims 1, 2, 4-11, 13-20, and 22-27 as being unpatentable
under 35 U.S.C. § 103(a) over Lambert and Randolph because one
skilled in the art would not have used Randolph’s plurality of visual
notifications displayed on a keypad in combination with Lambert’s
biometric acquisition system as set forth in Appellant’s claim 1?
(B) Whether Appellant has established that the Examiner erred
in rejecting claims 2, 11, and 20 as being unpatentable under 35
U.S.C. § 103(a) over Lambert and Randolph because the combination
does not teach or suggest auto-launching an application associated
with the notification as set forth in Appellant’s claim 2?
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(C) Whether Appellant has established that the Examiner erred
in rejecting claims 3, 12, and 21 as being unpatentable under 35
U.S.C. § 103(a) over Lambert, Randolph and Novoa because the
combination does not teach or suggest inserting a password and user
name during auto-launching as set forth Appellant’s claim 3?
FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
The Invention
1. 	Appellant states at page 2, lines 2-11 of the Specification that
the invention comprises:
A method and apparatus for using a biometric sensor for
notification is described. The sensor system comprising a sensing
logic to detect biometric data, and a notification logic to display a
visual notification on the biometric sensor to the user, in response to
an activity on a system to which the biometric sensor is coupled. For
one embodiment, if the activity is one that may trigger the user to log
into a program, such as an email system, the user may auto-launch and
auto-validate himself or herself to the system by simply providing the
biometric data via the sensor. Thus, in response to the notification,
the user may provide biometric data, which launches a pre-defined
program, and inserts any passwords required for the program.
2. 	Appellant states at page 4, lines 3-11, of the Specification that
with respect to his invention:
Biometric sensors, such as fingerprint sensors, generally include a
light that is used to capture the biometric image.
***
Using this light as a notification for the user provides additional
functionality for the sensor. For example, the light may be used to
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notify the user that biometric identification is needed . . . , or any other
reason to communicate with the user. For one embodiment, various
patterns of notification lights may be made, to indicate certain things.
3. 	Appellant states at page 9, lines 10-11, of the Specification that
with respect to his notification logic:
[T]he data sent by notification logic 350 may include turning a light
on and off, and the intensity of the light.
4. 	Appellant states at page 7, lines 21, through page 8, line 6, of
the Specification that with respect to his invention:
The notification mechanism 300 includes an activity monitor 310.
The activity monitor 310 monitors the main computer system, to
detect certain types of activities. For one embodiment, the user may
specify which activities to trigger from, using the user interface 340,
to store various activities 335 in memory 330. For one embodiment,
the activities may vary from a biometric specific activity, i.e. a request
for authentication/validation to general background activities.
General background activities which may be monitored for by activity
monitor 310 may be, for example, new mail arriving, a completion of
downloading of a file, a request from a non-primary window, etc. For
one embodiment, almost any activity may be specified by the user.
5. 	Appellant states at page 4, lines 12-15, of the Specification that
with respect to his invention:
Additionally, for one embodiment, an auto-launch function may be
tied to the notification. Auto-launch permits the user to launch an
application or access, including entering any required passwords,
simply by placing his or her finger on the biometric sensor during or
shortly after the notification.
6. 	Appellant states at page 10, lines 5-11, of the Specification that
with respect to his invention:
The auto-launcher 380 monitors whether the user has actually
presented the valid biometric data for authentication during or shortly
after the notification. If so, the auto-launcher 380 launches the
application or access associated with the notification, based on launch
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data 385 in memory. The application or access may be the display of
a web page, the launching of an application, the initiation of a certain
program, or any other activity that can be specified by the user.
7. 	Appellant states at page 10, lines 12-15, of the Specification
with respect to his invention:
If the application or access being launched requires a user name,
password, or other identification mechanism, the auto-launcher 380
may retrieve this data from the password data 390 in memory 330,
and insert it into the appropriate location.
Appellant’s Admissions
8. 	At page 1, lines 7-9, of the Background of the Specification
Appellant admits:
Biometric sensors are becoming more common. They are used to
secure access to a computer system, to simplify logging into sites that
require passwords, and for many other uses.
9. 	At page 1, lines 9-11, of the Background of the Specification
Appellant admits:
Generally, computers notify users of various actions that should be
taken, and warnings, by displaying a pop-up window on the display
screen.
Lambert
10. 	Lambert describes that one computer protection technique has
been to combine password-type schemes with stand alone biometric user-
identifying capturing devices. (Col. 1, ll. 52-54).
11. 	Lambert further describes that his inventive “user input device
130 may include a mouse, a trackball, a keyboard, a keypad, . . . or other
input devices, . . . and the like.” (Col. 4, ll. 44-48).
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12. 	Lambert states at column 2, lines 26-35, that an advantage of
his invention is that:
[A] computer to which it is attached runs a program that
analyses the signals provided by the device to determine the
identity of the user operating it and in response [emphasis
added], the program may restrict the use of the computer or
restrict the access to information on a network, and the like.
Alternatively, based upon the user identity, the program may
interpret the signals in a way specific to the specific user, for
example directory access, environmental preferences, e mail
access, and the like.
13. 	“Based upon the identity, a user specific configuration of the
computer can be performed, such as unlocking certain files, allowing access
to certain areas, and the like.” (Col. 3, ll. 21-24).
Lambert – Keypad Embodiment
14. 	Lambert describes a sensor system with a biometric sensor in
the form of a transparent keypad, at column 13, line 63 to column 14, line 6,
as follows:
For example, in an employee time card application, an
employee may be asked to type-in her employee identification
number onto a transparent keypad. In such an example, the
identification number would be the event data, and the
fingerprint of the employee is the biometric data. When there is
a record match of both the employee number and the employee
ID number, the punch-in or punch-out time is noted. However
when there is either an employee ID/fingerprint mismatch, no
fingerprint match, or no employee ID match, the employee may
be re-prompted to enter her employee ID.
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Lambert – Mouse Embodiment
15. 	Lambert describes his mouse embodiment, at column 5,
lines 6-10, as follows:
FIGS. 2a and 2b illustrate an embodiment of the present
invention. FIGS. 2a and 2b include a standard pointing device 200,
having selection buttons 210, biometric scanning regions 220-230,
and a motion sensor 240. Selection buttons 210 include biometric
scanning regions 250.
16. 	Lambert explains at column 6, lines 12-19, that in his mouse
embodiment:
In the present embodiment, biometric scanning region 220 is
used to capture a portion of a palm print of the user; biometric
scanning region 230 is used to capture a thumb print for a left-handed
user or a ring-finger of a right-handed user; and biometric scanning
regions 250 are used to capture fingerprints of the index and middle
finger. In the present embodiment, it is contemplated that scanning
region 230 is disposed on both sides of pointing device 200.
17. 	Lambert further describes his mouse embodiment, at column 6,
lines 57-65, as follows:
FIG. 3 illustrates a cross-section view of an embodiment of the
present invention. FIG. 3 includes a device 300 including biometric
sensors 310 and 320. Biometric sensors 310, 320 include translucent
panels 330, 340, illumination sources 350, 360, optical focusing
elements 370, 380, and image conduit elements 390, 400,
respectively. Device 300 also includes optical diffuser elements 410,
an optical sensor 420, motion sensor 430, and a processor 440.
Biometric sensor 340 is illustrated disposed upon selection button
450.
18. 	“In one embodiment, light sources 350 and 360 comprise light
emitting diodes (LEDs).” (Col. 7, ll. 10-12).
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19. 	“Light sources 350 and 360 typically have sufficient intensity
to illuminate the hand of a user above translucent panels 330 and 340.”
(Col. 7, ll. 22-24).
20. 	“[L]ight reflecting from of the user's hand passes back through
translucent panels 330 and 340 and encounters optical focusing elements
370 and 380.” (Col. 7, ll. 36-38).
21. 	Lambert further describes at column 8, lines 24-36, that the
mouse embodiment provides visual notifications, as follows:
In the present embodiment, processor 440 also controls light
sources 350 and 360. . . . Alternatively, light sources 350 and 360 may
be continuously illuminated so as to not alert the user to the capture of
biometric measurements.
An advantage to illuminating light sources 350 and 360, for
example, when biometric data is required, is that the device provides a
visual indication to the user that they should place their hand on the
device.
Lambert – System Processing Embodiments
22. 	In FIG. 4, a User Identifying Computer Peripheral Device (user
input device) 500 includes a Peripheral Activity Event subsystem (event
sensing portion) 510, a User Identifying subsystem (biometric acquisition
portion) 520, and a Microprocessor Unit (a processor portion) 530. User
input device 500 is typically a peripheral input device of a Computing
Device (computing unit) 540.
23. 	Lambert describes at column 9, lines 21-27, that the biometric
sensor has functionality in computer operations, as follows:
[T]his [biometric sensor] functionality is useful for restricting access
of computing unit 540 to authorized network resources, perceiving a
change in the user identity during the session of computing unit 540
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usage, authenticating the identity of the user during communication,
commerce, or voting applications, and the like.
24. 	Lambert describes at column 9, lines 30-35, that the input unit
500 includes a variety of devices:
[E]vent sensor 550 detects user events, such as physical interaction
with the input subsystem. As discussed above, this physical
interaction includes pushing of buttons, touching of a keypad,
movement of user input device 500, movement of a portion of user
input device 500 such as a track ball, speaking into a microphone,
facing a camera, directing the eyes towards a return scanning eye
movement cursor control, and the like.
25. 	“FIGS. 5a and 5b illustrate actions performed by computing
device 540 and user input device 500 described in FIG. 4.” (Col. 10,
ll. 61-63).
26. 	Lambert states that “computing device 540 generates a user
identification request, step 600” (col. 10, ll. 64-65). Specifically, the request
can be triggered by submission of an e-mail message by the user as
discussed at column 10, line 65, through column 11, line 6:
In embodiments of the present invention, this request can be triggered
by pre-determined or random "in-session" identification requests
embedded in the software, and the like. For example, as is illustrated
FIG. 7, one event is inactivity of user input device 500 for a
predetermined amount of time, e.g. no keyboard input, no cursor
movement, or the like; another type of event is submission of
electronic forms, e.g. e-mail messages, on-line secure transactions,
and the like.
27. 	Lambert further describes that when an identified user is not the
current logged-in user, the program for example auto-launches e-mail
configuration, as follows:
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If the [identified] user is not identified as the current logged-in user,
the program performs the routine specified for this event in the user
login profile for the identified user, step 970. For example,
automatically logging into particular network resources, providing
access to particular directory structures, initiating monitoring
programs, automatically configuring e-mail, printer resources,
telephone, paging, and the like. Further, if the user has access
permission to the current user login, no interruption in user access is
contemplated.
Randolph
28. 	Randolph describes “a keypad used to communicate with a
microprocessor used to monitor and record real time data for machinery.”
(col. 1, ll. 7-9).
29. 	Randolph describes at column 2, lines 10-15, that a feature of
his keypad invention is visual notifications:
[T]he present invention includes light indicators that are selectively
activated by the microprocessor in response to the status of the
machine. The light indicators thereby broadcast a lighting status
indicative of one of a plurality of predefined statuses of the machine
for view at a distance by an operator or an operator's supervisor.
30. 	Randolph further describes at column 4, lines 24-26, that:
The microprocessor controls which light indicators 56 are
selectively activated, either continuously or intermittently, to
broadcast the status of the printing press. The microprocessor
furthermore senses the operational condition of the printing press by a
conventional sensor (not shown) disposed on the printing press to
determine if the printing press is running, and broadcasts a lighting
status (flashing amber) if the printing press P is not running and a
status has not been selected by the operator indicating to the
microprocessor why the printing press P is not running.
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31. 	Randolph further describes at column 4, lines 33-42, that visual
notifications serve two purposes:
The purpose of the light indicators 56 is twofold. First, the
light indicators 56 are designed to inform an operator or an operator's
supervisor of the status of the printing press P at a glance, and second,
the light indicators 56 condition the operator to associate the various
predefined statuses of the printing press P with the lighting statuses.
. . . [Which] assists the operator in selecting an appropriate function
key by color and pattern in response to the statuses of the printing
press P broadcast by the microprocessor[.]
Novoa
32. 	Novoa describes at column 2, lines 7-18, that it is known to
insert a password and user name in a biometric fingerprint logon system as
follows:
When a user is first enrolled as a registered user, an image is captured
of the user's fingerprint, a template is generated therefrom, and a
password and username are assigned to the user. The password and
template are stored in a database and indexed by username. The
database thus contains passwords and fingerprint templates for all
users wishing to log on using the fingerprint identification
mechanism. During the log on process, the computer network
compares the template generated to templates previously stored in the
database. If a match is found, the computer selects the password that
is stored with the matching fingerprint template and uses the username
and password to log the user on the network.
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PRINCIPLES OF LAW
Reason to Combine/Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734, 82 USPQ2d 1385, 1391 (2007). The question of obviousness is
resolved on the basis of underlying factual determinations including (1) the
scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, (3) the level of skill in the art, and (4) where
in evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See also KSR, 127 S. Ct. at
1734, 82 USPQ2d at 1391 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, 82 USPQ2d at 1395, and discussed circumstances in which
a patent might be determined to be obvious. In particular, the Supreme
Court emphasized that “the principles laid down in Graham reaffirmed the
‘functional approach’ of Hotchkiss, 11 How. 248 [(1850)].” KSR, 127 S.Ct.
at 1739, 82 USPQ2d at 1395 (citing Graham v. John Deere Co., 383 U.S. 1,
12 (1966) (emphasis added)), and reaffirmed principles based on its
precedent that “[t]he combination of familiar elements according to known
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methods is likely to be obvious when it does no more than yield predictable
results.” Id. The Court explained:
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. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 1740, 82 USPQ2d at 1396. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use
of prior art elements according to their established functions.” Id.
The Supreme Court stated that there are “[t]hree cases decided after
Graham [that] illustrate this doctrine.” Id. at 1739, 82 USPQ2d at 1395. “In
United States v. Adams, … [t]he Court recognized that when a patent 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.” Id. at 1740, 82 USPQ2d at
1395. “Sakraida and Anderson’s-Black Rock are illustrative – a court must
ask whether the improvement is more that the predictable use of prior art
elements according to their established function.” Id. at 1740, 82 USPQ2d
at 1395.
The Supreme Court stated that “[f]ollowing these principles may be
more difficult in other cases than it is here because the claimed subject
matter may involve more than the simple substitution of one known element
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for another or the mere application of a known technique to a piece of prior
art ready for the improvement.” Id. The Court explained, “[o]ften, it will be
necessary for a court to look to interrelated teachings of multiple patents; the
effects of demands known to the design community or present in the
marketplace; and the background knowledge possessed by a person having
ordinary skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion claimed by
the patent at issue.” Id. at 1740-41, 82 USPQ2d at 1396. The Court noted
that “[t]o facilitate review, this analysis should be made explicit.” Id., citing
In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”). However, “the 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.” Id.
The Federal Circuit recently concluded that it would have been
obvious to combine (1) a mechanical device for actuating a phonograph to
play back sounds associated with a letter in a word on a puzzle piece with
(2) an electronic, processor-driven device capable of playing the sound
associated with a first letter of a word in a book. Leapfrog Enterprises, Inc.
v. Fisher-Price, Inc., 485 F.3d 1157, 1161, 82 USPQ2d 1687, 1690-91 (Fed.
Cir. 2007) (“[a]ccommodating a prior art mechanical device that
accomplishes [a desired] goal to modern electronics would have been
reasonably obvious to one of ordinary skill in designing children’s learning
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devices”). In reaching that conclusion, the Federal Circuit recognized that
“[a]n obviousness determination is not the result of a rigid formula
disassociated from the consideration of the facts of a case. Indeed, the
common sense of those skilled in the art demonstrates why some
combinations would have been obvious where others would not.” Id. at
1161, 82 USPQ2d at 1687 (citing KSR, 127 S. Ct. 1727, 1739, 82 USPQ2d
1385, 1395 (2007)) (“The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.”). The Federal Circuit relied in part on the fact that
Leapfrog had presented no evidence that the inclusion of a reader in the
combined device was “uniquely challenging or difficult for one of ordinary
skill in the art” or “represented an unobvious step over the prior art.” Id. at
1162, 82 USPQ2d at 1692 (citing KSR, 127 S. Ct. at 1740-41, 82 USPQ2d at
1396 (2007)).
ANALYSIS
Appellant separately argues independent claim 1 and dependent
claims 2, and 3. For independent claims 10 and 19, Appellant repeats the
same argument made for claim 1. We will therefore treat claims 4-11,
13-20, and 22-27 as standing or falling with claim 1. Dependent claims 2
and 3 will each be addressed separately. Because Appellant repeats the
same arguments for claims (11 and 20) and (12 and 21), respectively, we
will treat claims (11 and 20) and (12 and 21) as standing or falling with
claims 2 and 3, respectively. See 37 C.F.R. § 41.37(c)(1)(vii). See also In
re Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991).
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Issue A: Whether Appellant has established that the Examiner erred
in rejecting claims 1, 2, 4-11, 13-20, and 22-27 as being unpatentable
under 35 U.S.C. § 103(a) over Lambert and Randolph because one
skilled in the art would not have used Randolph’s plurality of visual
notifications displayed on a keypad in combination with Lambert’s
biometric acquisition system as set forth in Appellant’s claim 1.
Claim Interpretation.
Claims are given their broadest reasonable construction “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d
1827, 1830 (Fed. Cir. 2004). Claim 1 does not limit the sensor system in
terms that require any functional relationship between the “sensing logic to
detect biometric data,” and the “notification logic to display . . . a plurality
of visual notifications.” Rather, the claim only recites a structural
relationship in that the “sensing logic” is included in the biometric sensor
and the “visual notifications” of computer activity are on the biometric
sensor coupled to the computer.
The visual notifications “may include turning a light on and off, and
the intensity of the light.” (FF 3).
The particular computer activity may be “almost any activity” in the
computer system. (FF 4).
The Graham Factors
The patentability of claim 1 under 35 U.S.C. § 103(a) depends on
whether the claimed subject matter would have been obvious in view of
Lambert and Randolph.
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Whether representative claim 1 encompasses obvious subject matter is
determined in light of the four Graham factors. Lambert teaches a keypad
coupled to a computer having all the elements of the claimed device but for
notification logic to display a selected one of a plurality of visual
notifications in response to a particular computer activity (FF 14 and FF 23).
Randolph teaches a keypad with notification logic to display a selected one
of a plurality of visual notifications in response to a microprocessor
determination of machinery status (FF 28 through FF 31). Thus, the prior art
teaches all the elements of claim 1.
Appellant has not addressed the level of ordinary skill in the pertinent
art of electronic input devices. Accordingly, like the Examiner, we will
consider Lambert, Randolph, and Novoa as representative of the level of
ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355, 59
USPQ2d 1795, 1797 (Fed. Cir. 2001) (“[T]he absence of specific findings
on the level of skill in the art does not give rise to reversible error ‘where the
prior art itself reflects an appropriate level and a need for testimony is not
shown’” (internal citation omitted)). Appellant has presented no secondary
considerations of non-obviousness for our consideration.
Obviousness
Based on an analysis of the scope and content of Lambert and
Randolph, the facts support the conclusion that, but for the “notification
logic to display . . . visual notifications” Lambert’s keypad discloses all the
elements of the claimed device and their functions and that the “notification
logic to display . . . visual notifications” was disclosed in Randolph. Since
each individual element and its function, as described in claim 1, are shown
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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 structural attachment of Randolph’s keypad “notification logic to display
. . . visual notifications” to Lambert’s keypad.
Where, as here, the application claims the combination of familiar
elements according to known methods, it is likely to be obvious when it does
no more than yield predictable results. KSR, 127 S. Ct. at 1739, 82 USPQ2d
at 1395. In that regard, Appellant has provided no evidence that combining
Randolph’s keypad “notification logic to display . . . visual notifications”
with Lambert’s keypad yields an unexpected result or was beyond the skill
of one having ordinary skill in the art. Appellant’s Specification as well as
Appellant’s arguments does not present any evidence that including the
notification logic to display visual notifications in the sensor system was
uniquely challenging or difficult for one of ordinary skill in the art.
As in Anderson's-Black Rock, 396 U.S. 57 (1969), we find before us
two known elements in combination doing no more than they would in
separate, sequential operation. The function of the keypad elements remains
the same.
In its pre-KSR brief, Appellant argues for application of the teaching,
suggestion, motivation (TSM) test, stating that “there is no teaching or
suggestion within the references to make the combination indicated by the
Examiner.” (Br. 8:3-4). 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
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steps that a person of ordinary skill in the art would employ.” 127 S. Ct. at
1741, 82 USPQ2d at 1396.
Appellant also argues “[t]he references do not disclose similar
problems, nor do the references disclose similar purposes.” (Br. 8:15-16).
The Supreme Court noted in KSR that “any need or problem known in the
field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.” 127
S. Ct. at 1742, 82 USPQ2d at 1397.
Additionally, Appellant argues “the Examiner attempts an
impermissible reconstruction of the invention based on hindsight.”
(Br. 8:16-17). 	The Supreme Court noted in KSR that:
A factfinder should be aware, of course, of the distortion caused
by hindsight bias and must be cautious of arguments reliant
upon ex post reasoning. See Graham, 383 U.S., at 36, 86 S. Ct.
684 (warning against a “temptation to read into the prior art the
teachings of the invention in issue” and instructing courts to “
‘guard against slipping into the use of hindsight’ ” (quoting
Monroe Auto Equipment Co. v. Heckethorn Mfg. & Supply Co.,
332 F.2d 406, 412 (C.A.6 1964))).
127 S. Ct. at 1742, 82 USPQ2d at 1397. We find no hindsight is required to
construct Appellant’s invention from the prior art because as we have
already noted, we only find before us two known elements in combination
doing no more than they would in separate, sequential operation.
Finally, Appellant argues “[t]here is no suggestion in Lambert or
Randolph that the system provide visual notification in response to particular
activity.” (Br. 11:2-3). We disagree. Randolph explicitly describes “[t]he
microprocessor furthermore senses the operational condition of the printing
press” and “[t]he microprocessor controls which light indicators 56 are
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selectively activated, either continuously or intermittently, to broadcast the
status of the printing press.” (FF 30). Given, the great breath of the term
“computer activity” disclosed by Appellant (FF 4), we see no basis for
Appellant to argue that the Randolph microprocessor sensing is not
“computer activity” within the meaning of claim 1.
In cases such as the one before us, where the claim is two elements
already known in the prior art that are unaltered by the mere combination of
one known element with another element known in the field for the same
function, we see little need for the Examiner to belabor the analysis with a
detailed explanation as to why it would have been obvious to one of ordinary
skill in the art to derive the claimed combination from the teachings of the
prior art. 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).
It is sufficient in cases like this that the Examiner has reached a
conclusion of obviousness after careful consideration of the evidence within
the Graham framework. The burden, in cases like this, is properly shifted to
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Appellant to prove that the claimed subject matter would not have been
obvious over the prior art to one of ordinary skill in the art. Since here
Appellant has presented no evidence that combining Randolph’s keypad
“notification logic to display . . . visual notifications” with Lambert’s keypad
would have required anything more from one of ordinary skill in the art than
to combine two known keypad features doing no more than they would in
separate, sequential operation, the Examiner’s prima facie case of
obviousness has not been overcome, irrespective of Appellant’s views about
the strength of the Examiner’s reasoning. Accordingly, we conclude that the
subject matter of claim 1 would have been obvious to one of ordinary skill in
the art given the keypad teachings of Lambert and Randolph.
Alternative Obviousness Theory
Our holding supra is further buttressed by Lambert’s mouse
embodiment and system processing embodiment which together teach all the
limitations of claim 1. We find that Lambert teaches:
A sensor system (500 and 540) comprising (see FF 22):
a biometric sensor (220, 230, and 250) including a sensing logic
(440) to detect biometric data (see FFs 15-17); and
a notification logic (440 and 540) to display a selected one of a
plurality of visual notifications (350 and 360, off and on) on the
biometric sensor to a user, in response to a particular computer
activity on a system to which the biometric sensor is coupled (see
FF 21 and FF 26).
Light sources 350 and 360 have two states, “on” and “off” which both
provide a notification to the user in response to a particular activity on the
computer. Specifically, Lambert teaches that “[w]hen output of biometric
data is required [by computing device 540], processor 440 typically turns on
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light sources 350 and 360” and “when output of only input data is required
[by computing device 540], processor 440 typically turns off light sources
350 and 360.” (See FF 21 and FF 26). Further, Appellant states with
respect to his own disclosed invention that “[T]he data sent by notification
display logic 350 may include turning a light on and off, and the intensity of
the light” (Specification 9:10-11).
A disclosure that anticipates under 35 U.S.C. § 102 also renders the
claim unpatentable under 35 US.C. § 103, for “anticipation is the epitome of
obviousness.” Jones v. Hardy, 727 F.2d 1524, 1529, 220 USPQ 1021, 1025
(Fed. Cir. 1984). See also In re Fracalossi, 681 F.2d 792, 794, 215 USPQ
569, 571 (CCPA 1982); In re Pearson, 494 F.2d 1399, 1402, 181 USPQ
641, 644 (CCPA 1974).
In view of the above discussion, it is our view, that since Lambert
reasonably teaches a plurality of visual notifications on the biometric sensor,
Randolph is not actually necessary for a proper rejection under
35 U.S.C. § 103 of representative claim 1, as Lambert discloses all that is
claimed.3
Conclusion
Accordingly, we alternatively conclude that the subject matter of
claim 1 would have been obvious to one of ordinary skill in the art given the
teachings of Lambert and Randolph, or given Lambert alone.
3 The Board may rely on less than all of the references applied by the
Examiner in an obviousness rationale without designating it as a new ground
of rejection. In re Bush, 296 F.2d 491, 496, 131 USPQ 263, 266-67 (CCPA
1961); In re Boyer, 363 F.2d 455, 458 n.2 150 USPQ 441, 444 n.2 (CCPA
1966).
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Issue B: Whether Appellant has established that the Examiner erred
in rejecting claims 2, 11, and 20 as being unpatentable under 35
U.S.C. § 103(a) over Lambert and Randolph because the combination
does not teach or suggest auto-launching an application associated
with the notification as set forth in Appellant’s claim 2?
Claim Interpretation.
Giving claim 2 its broadest reasonable construction in light of the
specification as it would be interpreted by one of ordinary skill in the art,
claim 2 does limit the sensor system in terms that require a functional
relationship between the “sensing logic to detect biometric data,” and the
“notification logic to display . . . a plurality of visual notifications” of
independent claim 1. 	Specifically, dependent claim 2 recites a functional
relationship in that (1) there is a visual notification of computer activity on
the biometric sensor coupled to the computer, (2) the “sensing logic”
included in the biometric sensor then detects the user’s biometric data, and
(3) based on the detected biometric data, auto-launch logic launches an
application associated with the notification.
The application (i.e., computer activity) that is associated with the
notification “may be, for example, new mail arriving, a completion of
downloading of a file, a request from a non-primary window, etc. For one
embodiment, almost any activity may be specified by the user.” (FF 4).
The application that is automatically launched “may be the display of
a web page, the launching of an application, the initiation of a certain
program, or any other activity that can be specified by the user.” (FF 6).
Claim 2 does require that the application associated with the
notification and the automatically launched application be the same.
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Obviousness
As above with claim 1, Lambert’s mouse embodiment and system
processing embodiment together teach all the limitations of claim 2. We find
that Lambert teaches:
The sensor system of claim 1, further comprising:
an auto-launch logic to automatically launch an application
(automatically configuring e-mail in FF 27) associated with the
notification, if the user’s biometric data is detected (software
identification request in FF 26) in conjunction with the visual
notification (triggered by user submission of e-mail message in
FF 26).
Lambert describes an email application that triggers a biometric data request
which then automatically configures the e-mail application after identifying
an authorized user who is not the current logged-on user.
Appellant argues that the references fail to disclose “applications
associated with the notifications” and thus, “could not logically
automatically launch an application associated with a notification if
biometric data is detected in conjunction with the visual notification.”
(Br. 14:18-20). As our discussion directly above shows, Appellant is
mistaken as Lambert clearly discloses the disputed features.
Accordingly, we conclude that the subject matter of representative
claim 2 would have been obvious to one of ordinary skill in the art given the
teachings of Lambert alone.
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Issue C: Whether Appellant has established that the Examiner erred
in rejecting claims 3, 12, and 21 as being unpatentable under 35
U.S.C. § 103(a) over Lambert, Randolph and Novoa because the
combination does not teach or suggest inserting a password and user
name during auto-launching as set forth Appellant’s claim 3?
Claim Interpretation.
Giving claim 3 its broadest reasonable construction in light of the
specification as it would be interpreted by one of ordinary skill in the art,
claim 3 limits the auto-launch logic of claim 2 in terms that require the auto-
launch based on the user’s biometric data to also insert a “password” and
“user name,” when such is required by the launched application.
If the application being launched requires a user name or password,
the auto-launcher inserts it into the appropriate location. (See FF 7).
The Graham Factors
The patentability of claim 3 under 35 U.S.C. § 103(a) depends on
whether the claimed subject matter would have been obvious in view of
Lambert, Randolph, and Novoa.
Whether representative claim 3 encompasses obvious subject matter is
determined in light of the four Graham factors. As we have already
discussed, Lambert teaches all the limitations of independent claim 1 and its
dependent claim 2. Novoa teaches that if a matching biometric sensor
template is found, then selecting a stored password and username and
logging on to a network (FF 32). Thus, the prior art teaches all the elements
of claim 3.
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Obviousness
Since each individual element and its function, as described in
claim 3, 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.
Again, we find before us two known elements in combination doing no more
than they would in separate, sequential operation. The function of the
elements remains the same.
Appellant admit that Novoa discloses “[t]he password is then inserted
into a login application (Novoa, Figures 3 and 4)” (Br. 17:9-10). However,
Appellant argues Novoa “fails to describe ‘insert[ing] a password and user
name into the application when appropriate’” (Br. 17:10-11). We disagree.
Essentially, Appellant is arguing that claim 3 must be interpreted to include
that “a user name and password is not inserted onto an application each time
biometric data is detected” (Reply Br. 8:12). Appellant is mistaken. The
claim language “[inserting] when appropriate” at most also implies – not
inserting when inappropriate –. We find no teaching in Novoa that includes
inserting when inappropriate. Even if we adopt Appellant’s view that Novoa
always inserts a password and username because it is always appropriate,
this is not precluded by the language of claim 3. Claim 3, does not contain
any language that requires “when appropriate” by less than 100% of the
time.
Once again, the facts themselves show that there is no difference
between the claimed subject matter and the prior art but for the combination
itself. Also, Appellant has presented no evidence that combining Lambert’s
auto-launch system with Novoa’s password and username insertion would
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have required anything more from one of ordinary skill in the art than to
combine two known features doing no more than they would in separate,
sequential operation. Thus, the Examiner’s prima facie case of obviousness
has not been overcome.
Accordingly, we conclude that the subject matter of representative
claim 3 would have been obvious to one of ordinary skill in the art given the
teachings of Lambert and Novoa alone.
CONCLUSION
1. Appellant has failed to establish that the Examiner erred in
rejecting claims 1, 2, 4-11, 13-20, and 22-27 as being unpatentable under 35
U.S.C. § 103(a) over Lambert and Randolph.
2. Appellant has further failed to established that the Examiner erred
in rejecting claims 3, 12 and 21 as being unpatentable under 35 U.S.C.
§ 103(a) over Lambert, Randolph, and Novoa.
3. Thus, on this record claims 1-27 are not patentable.
DECISION
In view of the foregoing discussion, we affirm the Examiner’s
separate rejections under 35 U.S.C. § 103 encompassing claims 1-27 on
appeal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
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AFFIRMED
eld
Judith A. Szepesi
BLAKELY, SOKOLOFF, TAYLOR & ZAFMAN LLP
Seventh Floor
12400 Wilshire Boulevard
Los Angeles CA 90025-1026
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