Ex parte Righi

Informative decision only: persuasive authority, not binding precedent. When an obviousness rejection rests on combining familiar elements that are unaltered and perform the same function, the Board may affirm on less than all of the references the examiner applied, here Lambert alone, without designating a new ground of rejection, because Lambert disclosed all that was claimed. In such cases the examiner need not belabor the reason to combine, and the burden shifts to the appellant to show the combination would have required more than the predictable use of known elements. No prior precedent directly addressed this issue as the text shows; the Board applies KSR and Graham and treats pre-KSR teaching-suggestion-motivation arguments as insufficient. For the challenger, here the examiner, a rejection need not rest on a detailed explanation of motivation where two known elements are combined with no change in function, and the Board can sustain it on fewer references. For the appellant, arguments about no suggestion to combine, dissimilar problems or hindsight fail without evidence of unexpected results or that the combination was uniquely challenging. The Board relied on KSR Int'l Co. v. Teleflex Inc., Graham v. John Deere Co., Dann v. Johnston, Anderson's-Black Rock, and, for relying on fewer references, In re Bush (CCPA 1961) and In re Boyer (CCPA 1966). LEGAL TEST OR STANDARD: The Board applied the Graham factors: (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, and (4) where in evidence, secondary considerations. It applied KSR's rule that the combination of familiar elements according to known methods is likely obvious when it does no more than yield predictable results. Where the claim combines known elements unaltered, the examiner's careful Graham analysis suffices and the burden shifts to the appellant. TRIGGERING FACTS: Claim 1 recited a biometric sensor with notification logic displaying visual notifications. Lambert taught a keypad biometric system, and Randolph taught a keypad with visual notification lights. Each element and its function appeared in the prior art, and the function of the elements stayed the same. Appellant offered no evidence of unexpected results, secondary considerations, or that the combination was beyond ordinary skill. The Board also found Lambert's mouse and system embodiments alone taught every limitation, so Randolph was unnecessary. KEY QUOTE: "The Board may rely on less than all of the references applied by the Examiner in an obviousness rationale without designating it as a new ground of rejection." (p. 24, n.3) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board cited In re Bush, 296 F.2d 491, 496 (CCPA 1961), and In re Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966), for relying on fewer references without a new ground, and followed KSR, Graham, and Dann v. Johnston. PRACTICE TIP: Do not rely on arguments that the references lack a teaching, suggestion or motivation to combine, address different problems, or reflect hindsight. Where the rejection combines known elements with unchanged functions, submit evidence of unexpected results, secondary considerations, or that the combination was uniquely challenging. Also argue every reference separately, because the Board may affirm on fewer references than the examiner applied.