Appeal 2007-0820
Application 09/734,808
1 directed to the specific subject matter of the challenged claim, for a court can
2 take account of the inferences and creative steps that a person of ordinary
3 skill in the art would employ.” 127 S.Ct. at 1741, 82 USPQ2d at 1396.
4 The claim is to a structure already known in the prior art that is altered
5 by the mere substitution of one known element for another element known
6 in the field for the same function. The facts themselves show that there is no
7 difference between the claimed subject matter and the prior art but for the
8 combination itself. “[T]he mere existence of differences between the prior
9 art and an invention does not establish the invention's nonobviousness. The
10 gap between the prior art and respondent's system is simply not so great as to
11 render the system nonobvious to one reasonably skilled in the art.” Dann v.
12 Johnston, 425 U.S. 219, 230, 189 USPQ 257, 261 (1976) (holding that
13 claims directed to a machine system for automatic record keeping of bank
14 checks and deposits were obvious in view of the use of data processing
15 equipment and computer programs in the banking industry at the time of the
16 invention in combination with a prior art automatic data processing system
17 using a programmed digital computer for use in a large business
18 organization). Appellant has presented no evidence that combining the
19 Nakano device with the Harada bioauthentication means would have
20 required anything more from one of ordinary skill in the art than to
21 substitute one authentication means for a more advanced one. Accordingly,
22 we hold that the subject matter of claim 5 would have been obvious to one of
23 ordinary skill in the art given the teachings of Nakano and Harada.
24 Nonetheless, our holding is further buttressed by the teaching in
25 Dethoff of the substitutability of a voice print authentication for a PIN
26 authentication (FF 10). In particular, Dethloff teaches that it was known in
19
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