Appeal No. 2006-0775
Application No. 09/356,940
In McIntosh, the user of the system creates a password by inputting a sequence of letters into
memory. The sequence of letters corresponds to a sequence of numbers. During access of the
password, the user of the system inputs the sequence of letters, and the memory provides the
sequence of corresponding numbers to a display. If the user inputs an incorrect sequence of
letters during the access operation, then a random number generator will display a random
number (Abstract; McIntosh, page 2, lines 1 through 6; page 3, lines 6 through 15; page 4,
lines 21 through 46). Although He and Noll are directed to the use of a random number
generator during the operation of creating a password, as opposed to during the operation of
accessing a password as in McIntosh, the examiner concludes (answer, page 8) that it would
have been obvious to one of ordinary skill in the art “to add a random password generating
circuit, or to modify the password circuitry already disclosed by McIntosh.” Appellants argue
that the purported motivation (i.e., increased security, convenience and uniqueness of a random
password) for modifying McIntosh with the teachings of either He or Noll is insufficient to
support the structural redesign of McIntosh from a device that stores previously existing
passwords into a device that is capable of generating a password (brief, page 7; reply brief,
page 7). If such a modification is made to McIntosh, then the redesign will impermissibly
change the principle operation of the McIntosh device (brief, page 11; reply brief, page 7).
Based upon the teachings of the references, the appellants argue (brief, page 10) that the
examiner has used the appellants’ own teachings in an impermissible hindsight analysis.
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