Appeal 2007-1089
Application 10/348,277
Issue 4 (motivation)
We decide the question of whether a person of ordinary skill in the art
at the time of the invention would have been motivated to modify Anderson
with the teachings of Fielder
Appellants argue that a person of ordinary skill in the art would not
have been motivated to combine Anderson and Fielder in the manner
suggested by the Examiner because the coding system of Fielder is not
directed to an audio/video programming system [as taught by Anderson].
Appellants conclude that the Examiner has impermissibly relied upon
hindsight in formulating the rejection (Br. 13-14, Reply Br. 10-11).
The Examiner disagrees. The Examiner argues that an artisan would
have found it obvious to modify the method taught by Anderson to include
embedding audio with video as taught by Fielder because Anderson teaches
combining audio and video and Fielder teaches a method of embedding
audio into a video file (Answer 26).
Analysis of Issue 4
We note that the U.S. Supreme Court recently reaffirmed that “[a]
factfinder should be aware, of course, of the distortion caused by hindsight
bias and must be cautious of argument reliant upon ex post reasoning.” KSR
Int’l Co. v. Teleflex Inc., 127 S. Ct. at 1742, 82 USPQ2d at 1397. See also
Graham v. John Deere Co., 383 U.S. at 36, 148 USPQ at 474. Nevertheless,
in KSR the Supreme Court also qualified the issue of hindsight by stating
that “[r]igid preventative rules that deny factfinders recourse to common
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