Determining Obviousness Under 35 U.S.C. § 103 After KSR v. Teleflex Rationale A: Appeal 2007-3782 Application No. 10/755,554 Rationale B: Appeal 2007-2503 Application No. 10/225,978 Rationale C: Appeal 2007-3439 Application No. 10/191,445 Rationale D: Appeal 2007-1963 Application No. 10/121,226 Rationale E: Appeal 2007-1530 Application No. 10/095,112 Rationale F: Appeal 2007-4429 Application No. 09/942,445 TC2800 Examples

Objectives Overview of KSR Decision Review the Graham v. John Deere Inquiries For Obviousness. Review Examples of Rationales Suggested By KSR v. Teleflex.

KSR International Co. v. Teleflex Inc. The Supreme Court reaffirmed Graham v. John Deere Co. as the controlling case on the topic of obviousness. The Supreme Court stated that the Federal Circuit erred when it applied the well-known Teaching-Suggestion-Motivation (TSM) test in an overly rigid and formalistic way. Supreme Court indicated that the TSM test is only one of a number of valid rationales that can be used to determine obviousness. It is not the only rationale that may be relied on to support obviousness. Speaker note: There may be many different rationales that could be used. The focus of the examiner should be on gathering evidence for evaluating the Graham factors. Based on the findings, the examiner should make an appropriate determination regarding obviousness. Examiners should articulate a rationale that makes a convincing case for obviousness.

Factual Inquiries Of Graham v. John Deere What is the scope and content of the prior art? What are the differences between the prior art and the claims at issue? What is the level of ordinary skill in the pertinent art at the time the invention was made? Is there any objective evidence of non-obviousness in the record or that examiner is independently aware of ?

The Examiner As Fact Finder Examiners act as fact finder when resolving the Graham inquiries. Examiner must articulate findings as to the scope and content of the prior art as necessary to support the obviousness rejection being made. Examiner must articulate a reason or rationale to support the obviousness rejection. The rationale should be based on the state of the art and not impermissible hindsight, e.g. Applicant’s disclosure.

Rationale Examples The following examples will demonstrate the appropriate fact findings to support rationales suggested in KSR and provide an explanation of how the rationales lead to a conclusion of obviousness under 35 USC 103.

A hanging sound suppression device (10) comprising: An earring (12); A. Combining Prior Art Elements According To Known Methods To Yield Predictable Results We claim: A hanging sound suppression device (10) comprising: An earring (12); A sound suppression device (14); and A connector (16) coupled between said earring and said sound suppression device. Adapted from Application No. 10/755,554

A. Combining Prior Art Elements According To Known Methods To Yield Predictable Results Reference A teaches an ear plug connected to a pair of glasses, rather than an earring. Reference B teaches a hearing aid assembly which may be inserted into the user's ear, and is connected to an earring. Speaker notes: Reference B evidences a known method for supporting a sound modifying device through using an earring.

Applying This Rationale: A. Combining Prior Art Elements According To Known Methods To Yield Predictable Results Applying This Rationale: The prior art references teach all of the claimed elements. The difference between the prior art and the claimed invention is using an earring rather than eyeglasses for support of the sound suppression device. The combination of the known elements is achieved by a known method of using an earring for support of a sound modifying device. Speaker notes: The known method is directed to the manner of supporting a sounds modifying device by an earring. Explain that all of the elements are shown here in the references explicitly; however, this is not a requirement.

Applying This Rationale: A. Combining Prior Art Elements According To Known Methods To Yield Predictable Results Applying This Rationale: Since all the claimed elements would continue to operate in the same manner, specifically the sound suppression device would still dampen sound and the earring would still provide support. Therefore, the results would be predictable to one of ordinary skill in the art. As such, it would have been obvious to one of ordinary skill in the art to support the sound suppression device of Reference A with the earring of Reference B as being no more "than the predictable use of prior-art elements according to their established functions." Speaker notes: The known method is directed to the manner of supporting a sound modifying device by an earring.

A semiconducting device (60) comprising: A semiconducting die (10); B. Substitution Of One Known Equivalent Element For Another To Obtain Predictable Results We claim: A semiconducting device (60) comprising: A semiconducting die (10); At least one bump (30) and At least one bond wire (50) extending from said bump. Bump Adapted from Application No. 10/225,978

B. Substitution Of One Known Equivalent Element For Another To Obtain Predictable Results Reference A discloses semiconducting device 20 that includes everything claimed except it uses conductive leads 25 instead of bonding wire extending from bumps 11. Reference B discloses A semiconducting thin film device on a substrate and uses bonding wires 21 extending from bumps 15. Speaker notes: The reference provide evidence that both conductive leads and bonding wires perform the same function of providing an electrical connection. This supports a determination that the leads and wires are functional equivalents to one of ordinary skill.

Applying this rationale: B. Substitution Of One Known Equivalent Element For Another To Obtain Predictable Results Applying this rationale: The prior art references teach all of the claimed elements. The difference between the prior art and the claimed invention is using a conductive leads for electrical connection rather than a bonding wire. One of ordinary skill in the art would have recognized that conductive leads and bonding wires are known equivalents for providing electrical connectivity to bumps within the semiconductor art. Speaker notes: Again, the references provide evidence of the conclusion that the wires and leads are functional equivalents.

Applying this rationale: B. Substitution Of One Known Equivalent Element For Another To Obtain Predictable Results Applying this rationale: It would have been obvious to one of ordinary skill in the art to substitute one known element (bonding wires) for another known equivalent element (conductive leads) resulting in the predictable result of forming electrical connectivity to bump. Speaker notes: Again, the references provide evidence of the conclusion that the wires and leads are functional equivalents.

C. Use Of Known Techniques To Improve Similar Devices In The Same Way We claim: A cholesteric color filter comprising: A barrier coating formed on a cholesteric filter layer, said barrier layer preventing oxidation of the filter. Cholesteric Color Filter Substrate Liquid Crystal Layer Barrier Coating Cholesteric Filter Layer Substrate Adapted from Application No. 10/191,445

C. Use Of Known Techniques To Improve Similar Devices In The Same Way Reference A teaches a cholesteric color filter having a layer 200 of material having a cholesteric order and known to have a problem with oxidization. Reference B teaches applying a barrier coating 78 to a color filter 86 to prevent oxidation of the color filter.

C. Use Of Known Techniques To Improve Similar Devices In The Same Way Applying This Rationale: The prior art references teach all of the claimed elements. The difference between the prior art and the claimed invention is the use of a barrier coating to prevent oxidation in a cholesteric color filter. The prior art shows adding a barrier coating to a color filter to prevent oxidation. Point out that in certain circumstances, such as maybe C and D, it is not always necessary to find all of the elements explicitly in the prior art. See Dann v. Johnston and the KSR Guidelines.

C. Use Of Known Techniques To Improve Similar Devices In The Same Way Applying This Rationale: One of ordinary skill in the art would have recognized that the addition of the barrier coating would improve the characteristics and performance of the claimed (cholesteric) color filter by preventing oxidation of the color filter. It would have been obvious to one of ordinary skill in the art to improve the cholesteric color filter using the known technique of barrier coatings, to achieve the predictable result of reduced oxidization in the color filter. Point out that in certain circumstances, such as maybe C and D, it is not always necessary to find all of the elements explicitly in the prior art. See Dann v. Johnston and the KSR Guidelines.

An ion powered platform, comprising: A vehicle body, D. Use Of Known Technique To A Known Device Ready For Improvement To Yield Predictable Results We claim: An ion powered platform, comprising: A vehicle body, An electric load; and An electrically conductive probe on said vehicle body for generating electrical energy from an ambient electrostatic field gradient. Ion Powered Platform Conductive Probe Electrical Load Speaker notes: The longer a conductive probe (length of tether), the more electrostatic energy that can be generated. Using a vehicle similar to an unmanned reconnaissance aircraft, a probe or tether can be made extremely long by allowing it to trail behind or hang down from the aircraft. Vehicle Body Adapted from Application No. 10/121,226

D. Use Of Known Technique To A Known Device Ready For Improvement To Yield Predictable Results Reference A teaches a generator using Earth’s electrostatic field and meeting all the claimed elements, except for a vehicle body. Reference B teaches a generator using Earth’s magnetic field having a long wire 307 on a vehicle body 301. Magnetic Field Lines Speaker notes: Reference A uses a conductive probe similar to the claimed invention for generating electrostatic energy, but it is fixed to ground. As would be recognized, the length of this probe would have physical limits to its length. Reference B is for generating energy from the magnetic field rather than electrostatically. However, it uses a tether or probe in a manner similar to the claim. This reference teaches extending the probe/tether from a space ship. In this manner, the probe/tether does not need to work against gravity and can therefore achieve great lengths. The longer the length, the more energy generated.

Applying This Rationale: D. Use Of Known Technique To A Known Device Ready For Improvement To Yield Predictable Results Applying This Rationale: The prior art references teach all of the claimed elements. The difference between the prior art and the claimed invention is that the conductive probe for generating electrostatic energy is not on a vehicle body, but it is fixed to the ground. As would be recognized by one of ordinary skill in the art, the length of the electrostatic probe fixed to the ground would be limited in achievable length; whereas a probe extended from a vehicle body is not constrained by gravitation/physical limits. Therefore, the probe can be made in greater lengths and thereby generate more energy. Speaker notes: The known technique is supporting a tether/probe by a vehicle body so as to achieve long lengths and increased energy.

Applying This Rationale: D. Use Of Known Technique To A Known Device Ready For Improvement To Yield Predictable Results Applying This Rationale: One of ordinary skill in the art would have recognized energy generation would be improved placing the electrically conductive probe on a vehicle body thereby increasing the achievable length. It would have been obvious to one of ordinary skill in the art to use the known technique of supporting a conductive probe on a vehicle body to improve the known ion powered platform to achieve the predictable result of increased probe length and thereby increased energy generation. Speaker notes: The known technique is supporting a tether/probe by a vehicle body so as to achieve long lengths and increased energy.

E. “Obvious to Try” – Choosing From A Finite Number Of Predictable Solutions We claim: A shielded connector comprising: A connector housing, A mounting portion, A tubular body; Wherein the housing is made of a composite material having electrically conductive ceramic grains of Al-B-C. Shielded Connector Adapted from Application No. 10/095,112

E. “Obvious to Try” – Choosing From A Finite Number Of Predictable Solutions The admitted prior art teaches the claimed shielded connector except the prior art connector is made of aluminum instead of a composite material having electrically conductive ceramic grains of Al-B-C. Admitted Prior Art

E. “Obvious to Try” – Choosing From A Finite Number Of Predictable Solutions A reference teaches a computer disc having a ceramic substrate for shielding including electrically conductive ceramic grains. The reference further teaches a limited number (12) of ceramic grains that are electrically conductive and provides a list of these that includes Al-B-C. Prior Art Reference Computer Disc Substrate

E. “Obvious To Try” – Choosing From A Finite Number Of Predictable Solutions Applying This Rationale: All of the claimed elements are evidenced as known in the admitted prior art except for the specific type of ceramic grain. One of ordinary skill in the art would have recognized the finite number of predictable solutions for electrically conductive ceramic grains as evidenced by the prior art reference. Absent unexpected results, it would have been obvious to try each of the twelve different electrically conductive ceramic grains to yield a composite suitable for an electrically conductive housing. Speaker notes: Caution the examiners that if the applicant alleges unexpected results, the examiner needs to determine that the results are in fact truly unexpected. The examiner needs to weigh the evidence presented and insure that the unexpected results are a result of the claimed invention.

A semiconducting device comprising: A radiating plate; F. Known Work In One Field Of Endeavor May Prompt Variations Of It For Use In Either The Same Field Or A Different One Based On Design Incentives Or Other Market Forces If The Variations Would Have Been Predictable To One Of Ordinary Skill In The Art. We claim: A semiconducting device comprising: A radiating plate; A semiconductor chip bonded to the plate; a side and a top both made of the same polyimide resin. Adapted from Application No. 09/942,445

Reference A discloses: F. Known Work In One Field Of Endeavor May Prompt Variations Of It For Use In Either The Same Field Or A Different One Based On Design Incentives Or Other Market Forces If The Variations Would Have Been Predictable To One Of Ordinary Skill In The Art. Reference A discloses: A semiconductor device 10 having all the claimed elements except the sides 12 and top 11 are not both made of the same materials. Semiconductor Device Reference B discloses: A chip inductor device having a housing 16 with both the top and sides being made of the same polyimide resin. Chip Inductor Device

Applying This Rationale: F. Known Work In One Field Of Endeavor May Prompt Variations Of It For Use In Either The Same Field Or A Different One Based On Design Incentives Or Other Market Forces If The Variations Would Have Been Predictable To One Of Ordinary Skill In The Art. Applying This Rationale: The prior art references teach all of the claimed elements. The difference between the prior art and the claimed invention is the top and sides are not both made of polyimide resin. The prior art shows that it was known to form both the top and sides of a housing for an electronic device of the same material, specifically a polyimide resin.

Applying This Rationale: F. Known Work In One Field Of Endeavor May Prompt Variations Of It For Use In Either The Same Field Or A Different One Based On Design Incentives Or Other Market Forces If The Variations Would Have Been Predictable To One Of Ordinary Skill In The Art. Applying This Rationale: One of ordinary skill in the art would recognize that forming both the top and sides of the same material would streamline manufacturing and cut costs. It would have been obvious to one of ordinary skill in the art to implemented the claimed variation of making the top and sides of the same material to save money/ streamline manufacturing. The operation of the device would remain unchanged.

G. TSM: Teaching, Suggestion, Motivation Test A finding that there was some teaching, suggestion, or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and, A finding that there was reasonable expectation of success. Rationale: The claim would have been obvious because a person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and that there would have been a reasonable expectation of success. Speaker notes: Reminder that TSM has not gone away. It is remains a valid rationale for supporting obviousness. As previous discussed, there may be several valid rationales to support the examiner’s conclusion of obviousness. The examiner should choose the rationale that provides the best case.