Sunday, January 03, 2010

Obviousness in Ex Parte Hughes at the BPAI

The blog 12:01Tuesday discusses the BPAI decision Ex Parte Hughes.

Of the obviousness component, from KSR:

“Common sense teaches . . . that familiar items may have obvious
uses beyond their primary purposes, and in many cases a person of ordinary
skill will be able to fit the teachings of multiple patents together like pieces
of a puzzle.” [KSR, 550 U.S. at 420.]


Thus, a person with ordinary skill in the art would know to use a persistent memory for file back,
and not to transact real time operations given such limitations. This is
because the Appellants’ system is a solution to a problem where there are
only a finite number of identified, predictable solutions exist,
namely, using
a faster system to book transactions as opposed to one which is slower, and
thus success is likely the product not of innovation but of ordinary skill and
common sense. See KSR, 550 U.S. at 421.


Thus, a person with ordinary skill in the art would look to Silverman,
and with the goal of keeping updates immediate, would place the order book
in Marks de Chabris in the main memory thereby insuring faster updates.
See KSR, 550 U.S. at 418 (In making the obviousness determination one
“can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”).


As found supra, the processes operated at the main memory are
speedier than those at the persistent memory. Thus, it is matter of common
sense to effect processing at the speedier of the two places, in the manner set
forth in claim 4. See KSR, 550 U.S. at 421.

The question posed by the 12:01 blog was: do you think the Board erred when
it reversed the examiner's 101 rejection of this claim?

See also

KSR v. Teleflex: story-telling is nice, but...

See also, from IPFrontline on "common sense" in Perfect Web Technologies, Inc. v. InfoUSA, Inc.

On appeal, the parties agreed that steps (A)-(C) were disclosed in the prior art and that step (D) did not appear in the prior art. Thus, the principal issue before the Federal Circuit was whether common sense would have taught step (D). The Court affirmed the district court, holding that the method claim was obvious. The Court began its obviousness analysis by reiterating that “common sense can be a source of reasons to combine or modify prior art references to achieve the patented invention.” The Court also noted that, while common sense must be based on a reasoned explanation that avoids conclusory generalizations, it does not require a specific hint or suggestion in a particular reference. In light of the Court’s prior statements regarding common sense and the Supreme Court’s statements in KSR, the Court held that “while an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” The Court made clear, however, that a court must provide a clear and reasoned explanation for finding a patent claim to be obvious. In other words, “common sense” is not a synonym for “obviousness.” As the court warned, in order to invoke common sense as a basis for reaching a conclusion of obviousness, “a district court must articulate its reasoning with sufficient clarity for review.”


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