Ex parte McBrearty

Informative decision only: persuasive authority, not binding precedent. When the prior art identifies a design need or problem (here, Web latency) and a finite number of identified, predictable solutions, the Board may conclude that choosing one of them, with a reasonable expectation of success, would have been obvious under 35 U.S.C. § 103(a), applying KSR's statement that a person of ordinary skill "has good reason to pursue the known options within his or her technical grasp." The Board treated this finite-solutions rationale as one of three alternative KSR rationales, and the appellant's failure to present evidence that the choice was uniquely challenging or an unobvious step left the rejection standing. No prior precedent directly addressed this issue; the decision applies KSR, decided shortly before, and sets out the Board's explicit method of articulating KSR rationales. For examiners, it shows how to support obviousness by identifying the design need, enumerating the finite known options, and noting that the prior art discloses them, with a reasonable expectation of success. For applicants and appellants, a claim differing from the prior art only by which of two known options controls a step (user versus computer program) is vulnerable, and bare argument that the references teach complete files rather than portions or that hindsight was used did not carry the burden. The Board relied on KSR v. Teleflex, Graham v. John Deere, and Leapfrog Enters. v. Fisher-Price, which are cited as the governing Supreme Court and Federal Circuit authority. LEGAL TEST OR STANDARD: Graham factual inquiries (scope and content of the prior art, differences between claims and prior art, level of skill, secondary considerations), then KSR rationale (A): the claimed subject matter is a choice from a finite number of identified, predictable solutions to a problem, with a reasonable expectation of success. The Board also stated alternatives (B) application of a known technique to a known system ready for improvement to yield predictable results, and (C) a predictable variation of a known work promoted by design incentives. TRIGGERING FACTS: Latency was a recognized problem with Web browsers; caching and user control over selecting and loading portions of a document were known solutions. The prior art disclosed two options for controlling selection (user or computer) and two for controlling loading (user or computer). Appellants pointed to no other option, the Board knew of none, and appellants offered no evidence of difficulty, of an unobvious step, or of secondary considerations. KEY QUOTE: "There are a finite number of identified, predictable ways to control the selection and loading of documents." (Paper N/A, p. 25) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board follows KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007), Graham v. John Deere Co., 383 U.S. 1 (1966), Dann v. Johnston, 425 U.S. 219 (1976), and Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157 (Fed. Cir. 2007). PRACTICE TIP: Do not rely on pointing out that no single reference teaches the exact limitation. Where the claim merely selects among known options, submit evidence that the choice was uniquely challenging or difficult, show that the options are not finite or predictable, or present secondary-considerations evidence. Also argue every claim group separately, since unargued claims stand or fall with the representative claim.