Thursday, December 27, 2012

The Board discusses "obvious improvement" in MacKenzie

The Board affirmed obviousness in Ex parte PHILIP D. MacKENZIE

Moreover, we are not persuaded by Appellant’s arguments, which unduly focus on the individual steps in Faucher’s joint process to obtain a session key and ignore the capabilities of the skilled artisan. The test for obviousness is “what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See id. at 426; In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As noted by the Court in KSR, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).

As to "obvious improvement,"

The Examiner’s proposed combination of Cramer-Shoup and Faucher predictably uses prior art elements according to their established functions— an obvious improvement. See KSR, 550 U.S. at 417. Accordingly, we find the Examiner’s reason to combine the teachings of the cited references supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion.

AND, of the need for substance in arguments,

Apart from merely summarily asserting that the relied on portion of Cramer-Shoup (col. 7, ll. 10-27) does not teach or suggest generating information a form of the random secret, a share of a private key, and the ciphertext, Appellant does not persuasively show error in the Examiner’s position in this regard (App. Br. 10; Reply Br. 5). Accord In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”).


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