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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