Ex parte Catan

When a claimed structure is a known prior art structure altered by the mere substitution of one known element for another known element performing the same function (here, bioauthentication in place of a PIN or password), the Board may conclude the claim obvious under 35 U.S.C. § 103(a) without a precise teaching, suggestion or motivation in the references, because the combination must do more than yield a predictable result. The burden then falls on the appellant to show an unexpected result or that the substitution was beyond ordinary skill. The Board may also rely on a known problem with an obvious solution and on the interchangeability taught in the art as the reason to substitute. No prior precedential Board decision is named in the text; the decision applies KSR International Co. v. Teleflex Inc. to reject the appellant's insistence on a strict teaching, suggestion, motivation test. For an examiner, a rejection can rest on known-element substitution plus an articulated rationale such as predictable results, known interchangeability and a known problem with an obvious solution, without a reference expressly suggesting the specific combination. For an applicant, arguing that no express suggestion exists is not enough: the applicant must produce evidence of unexpected results, that the substitution was uniquely challenging or beyond the skill in the art, or teaching away. The Board relied on KSR, Graham v. John Deere Co., United States v. Adams, Dann v. Johnston, Leapfrog Ent., Inc. v. Fisher-Price, Inc. (Fed. Cir. 2007) and In re Kahn, which bind the analysis. LEGAL TEST OR STANDARD: Graham factual inquiries: (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, plus secondary considerations. Under KSR's functional approach, where a claim covers a known structure altered by the mere substitution of one known element for another, the combination must do more than yield a predictable result, and the question is whether the improvement is more than the predictable use of prior art elements according to their established functions. The analysis should be explicit with articulated reasoning, but need not find precise teachings directed to the specific subject matter and may account for the inferences and creative steps of a person of ordinary skill. TRIGGERING FACTS: Nakano disclosed every element of claim 5 except that its authentication was by password or PIN rather than a bioauthentication device. Harada showed a fingerprint sensor on a remote control, which the appellant did not traverse. Dethloff taught substituting a voice print for a PIN as the sub-user enabling code. The art showed PINs and bioauthentication used interchangeably, and bioauthentication was more reliable. The appellant offered no evidence of unexpected results or of difficulty, and the claim was construed broadly, not limited to a local processor. KEY QUOTE: "The claim is to a structure already known in the prior art that is altered by the mere substitution of one known element for another element known in the field for the same function." (p. 19) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The decision follows KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727 (2007), Graham v. John Deere Co., 383 U.S. 1 (1966), United States v. Adams, 383 U.S. 39 (1966), Dann v. Johnston, 425 U.S. 219 (1976), and Leapfrog Ent., Inc. v. Fisher-Price, Inc., 485 F.3d 1157 (Fed. Cir. 2007). PRACTICE TIP: Do not rest an appeal brief on the absence of an express teaching, suggestion or motivation to combine. Where the rejection is a known-element substitution, build a record with evidence of unexpected results, teaching away, or genuine difficulty in implementing the substitution, and draft claims narrow enough to exclude broad constructions such as a non-local processor.