Appeal 2007-0820
Application 09/734,808
1 that including the bioauthentication device into the consumer electronic
2 device was uniquely challenging or difficult for one of ordinary skill in the
3 art.
4 As in Leapfrog, the device defined by claim 5 is an adaptation of an
5 old invention (Nakano) using newer technology that is commonly available
6 and understood in the art (Harada). Adding bioauthentication to the Nakano
7 device does no more to Nakano’s device than it would do if it were added to
8 any other device. The function remains the same. Predictably,
9 bioauthentication adds greater security and reliability to an authorization
10 process (FF 12). This variation on Nakano’s device, whereby the manual
11 authentication means of the Nakano device is replaced with Harada’s
12 bioauthentication means, appears to present no unexpected technological
13 advance in the art. One of ordinary skill in the art of consumer electronic
14 devices would have found it obvious to update the Nakano device with the
15 modern authentication components of the Harada bioauthentication means
16 and thereby gaining, predictably, the commonly understood benefits of such
17 adaptation, that is, a secure and reliable authentication procedure (FF 12).
18 Appellant argues that the Examiner has failed to provide sufficient
19 reasoning to reach a conclusion of obviousness based on the prior art
20 (Appeal Br. 11-20). Appellant repeatedly argues for application of the
21 teaching, suggestion, motivation (TSM) test, stating that “[t]here must be
22 some suggestion or motivation, either in the references themselves, or in the
23 knowledge generally available to one of ordinary skill in the art, to modify a
24 reference or to combine reference teachings” (e.g., Appeal Br. 11). The
25 Supreme Court noted in KSR that although the TSM test “captured a helpful
26 insight,” an obviousness analysis “need not seek out precise teachings
18
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