Appeal 2007-0820
Application 09/734,808
1 Based on an analysis of the scope and content of Nakano and Harada,
2 the facts support the conclusion that, but for the bioauthentication means,
3 Nakano discloses all the elements of the claimed device and their functions
4 and that the bioauthentication means was disclosed in Harada. Since each
5 individual element and its function, as described in claim 5, are shown in the
6 prior art, albeit shown in separate references, the difference between the
7 claimed subject matter and that of the prior art rests not on any individual
8 element or function but in the very combination itself; that is, in the
9 substitution of Harada’s bioauthentication device for Nakano’s manual
10 authentication means. Where, as here “[an application] claims a structure
11 already known in the prior art that is altered by the mere substitution of one
12 element for another known in the field, the combination must do more than
13 yield a predictable result,” KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1395
14 (citing United States v. Adams, 383 U.S. 50-51, 148 USPQ 479, 483 (1966)).
15 In that regard, Appellant has provided no evidence that replacing Nakano’s
16 manual authentication means with Harada’s known bioauthentication means
17 yields an unexpected result or was beyond the skill of one having ordinary
18 skill in the art.
19 The Appellant’s own Specification only generally describes the idea
20 of incorporating a bioauthentication device, such as a fingerprint sensor, into
21 a consumer electronics device and the matching function needed to compare
22 the scanned bioauthentication information with the stored bioauthentication
23 information (e.g., Specification 6:6-7 and 6:17-7:2). The Specification does
24 not provide a detailed description of the implementation in hardware or
25 software of the bioauthentication device. Furthermore, Appellant’s
26 Specification as well as Appellant’s arguments do not present any evidence
17
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