Appeal 2007-0958
Application 10/807,935
unlock a device was uniquely challenging or difficult for one of ordinary
skill in the art.
Additionally, Appellants argue “the claims in the current application
have been rejected by: 1) using impermissible hindsight to correct for a
failing to find a suggestion to combine the references.” (Br. 4). 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 Appellants’ invention from the prior art because as we have
already noted, we only find before us two known methods in combination
doing no more than they would in separate, sequential operation.
In cases such as the one before us, where the claim is two methods
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
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