Ex Parte Suryanarayana et al - Page 7


               Appeal 2007-0647                                                                             
               Application 10/421,366                                                                       

                      Regarding the issue of hindsight, in KSR the U.S. Supreme Court                       
               reaffirmed 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.” KSR, 127 S. Ct. at 1742.  See also Graham v. John Deere                     
               Co., 383 U.S. 1, 36 (1966).  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 sense, however, are neither necessary                    
               under our case law nor consistent with it.”  KSR, 127 S. Ct. at 1742-43.                     
                      In KSR, the Supreme Court further stated:                                             
                            When a work is available in one field of endeavor,                              
                            design incentives and other market forces can                                   
                            prompt variations of it, either in the same field or a                          
                            different one.  If a person of ordinary skill can                               
                            implement a predictable variation, § 103 likely                                 
                            bars its patentability.  For the same reason, if a                              
                            technique has been used to improve one device,                                  
                            and a person of ordinary skill in the art would                                 
                            recognize that it would improve similar devices in                              
                            the same way, using the technique is obvious                                    
                            unless its actual application is beyond his or her                              
                            skill.                                                                          
                      KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396.                                           

                      This reasoning is applicable here.  Indeed, we find the Examiner’s                    
               proffered combination of August, DiPietro, and Witkowski reasonably                          
               teaches and/or suggests Appellants’ claimed invention in terms of familiar                   
               elements (e.g. text and image-based menu displays and wireless                               
               communications) that would have been combined by an artisan having                           
               common sense using known methods to achieve a predictable result.  “The                      

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