Post-KSR Activity at the BPAI

The Board of Patent Appeals and Interferences issued two decisions on May 10 addressing obviousness and KSR. In one decision, the examiner was reversed, while the second decision affirmed the 103 rejection. Both decisions came from art unit 2100

U.S. Application 09/757,913 (PAIR link) - obviousness reversed

We begin our analysis by noting that in the rejection of claims 1 and 12, the Examiner asserts that Chen teaches the limitations argued by Appellants (i.e., "stopping the context information updating . . ." and "taking a snapshot of the compression and decompression context information . . ." )(see Answer 4; see also claim 1). However, when we look to the Examiner's rejection for specific citations for these argued limitations, there are none (Answer 4, ¶1). In responding to Appellants' arguments, the Examiner asserts that Chen inherently teaches "stopping the context information updating" as claimed (see Answer 16). Likewise, the Examiner asserts that Chen inherently teaches "taking a snapshot of the compression and decompression context information," as claimed. (See Answer 18,T 2: 8-10, i.e., "It is inherent that a snapshot can only be taken when all the data has been received as claimed. Otherwise, the snapshot would be useless").

After carefully considering both the Chen and Maggenti references, we find no specific teaching or suggestion within either reference that fairly meets the language of the claim that requires "stopping the context information updating. . .," and "taking a snapshot of the compression and decompression context information . . ." (claim 1). We find that to affirm the Examiner on this record would require speculation on our part. Furthermore, the Court of Appeals for the Federal Circuit has determined that inherency may not be established by probabilities or possibilities. "The mere fact that a certain thing may result from a given set of circumstances is not sufficient." In re Robertson, 169 F.3d 743,745,49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) (internal citations omitted). Because we find the combination of Chen and Maggenti fails to teach or suggest all the limitations recited in the claim, we agree with Appellants that the Examiner has failed to meet the burden of presenting a prima facie case of obviousness. Accordingly, we will reverse the Examiner's rejection of independent claim 1 as being unpatentable over Chen in view of Maggenti.

U.S. Application 09/999,074 (PAIR link) - obviousness affirmed

Contrary to Appellants' argument, Guheen in fact discloses technological means to perform user management (e.g., developing user profiles via a database and customizing interfaces based on specific user profiles) as we discussed previosly. Moreover, Berg's flow management engine tracks each user's identification (e.g., the user's login name) for each particular step in a flow in a database." Based on these collective teachings, as well as the inferences and creative steps that the skilled artisan - an electrical engineer with several years of related industry experience - would reasonably employ, we see no reason why the skilled artisan would not have combined the user management features of Guheen with Berg's workflow management capability. Such a combination would provide, among other things, customized interfaces tailored to particular users in a workflow environment. For at least these reasons, the skilled artisan would have reasonably combined the respective teachings of the references.

Joe Miller at the Fire of Genius is compiling a post-KSR collection of CAFC and district court cases, as well as BPAI decisions on obviousness. It's a fantastic resource that should be visited by everyone in the weeks/months (years?) to come.