Appeal 2007-1317
Application 09/731,623
out before logging on to another session (see Answer 10, ¶ 1). The
Examiner asserts that Wu solves this problem (id.). When we look to the
primary Savill reference, we find the single-page reference teaches a
Microsoft Windows super-user (SU) utility that allows a system
administrator to temporarily start applications running in the security context
of a different account without having to first close all open applications and
log off (Savill, ¶ 1). Thus, we find the problem proffered by the Examiner is
already solved by Savill. We note that the U.S. Supreme Court recently
reaffirmed that “[a] factfinder should be aware, of course, of the distortion
caused by hindsight bias and must be cautious of argument reliant upon ex
post reasoning.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d
at 1397. See also Graham v. John Deere Co., 383 U.S. at 36, 148 USPQ at
474. 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 Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
82 USPQ2d at 1397. In the instant case, we conclude that a person of
ordinary skill in the art having common sense at the time of the invention
would not have reasonably looked to Wu to solve a problem already solved
by Savill. Therefore, we agree with Appellants that the Examiner has
impermissibly used the instant claims as a guide or roadmap in formulating
the rejection.
For at least the aforementioned reasons, we agree with Appellants that
the Examiner has failed to meet the burden of presenting a prima facie case
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