Ex parte Catan (BPAI 2007).
Catan’s invention involves using a bioauthentication device (e.g., fingerprint scanner) to authorize credit-account orders. On appeal, the Board of Patent Appeals & Interferences (BPAI) affirmed the Examiner’s finding of obviousness based on a combination of references.
As we know, a combination of familiar elements used according to known methods is probably obvious unless it yields unpredictable results. Obviousness determinations at the PTO are, at least theoretically, made easier by giving claim terms “their broadest reasonable construction.” In Catan’s case, for instance, the claimed ‘consumer electronic device’ could reasonably include a combination of base and remote stations communicating over a wireless network. (no “local” requirement).
Two pieces of prior art were presented: Nakano disclosed everything except that a password was used instead of the bioauthentication device, and Harada disclosed a fingerprint scanner. A third reference, Dethloff, taught that bioauthentication can substitute for a password.
This really is an easy example of obviousness:
“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. The facts themselves show that there is no difference between the claimed subject matter and the prior art but for the combination itself.”
The Board goes-on to say that the linking-reference (Dethloff) was not necessary, but it makes the case against the applicant even tighter. Motivation for the combination is also found in Harada, which also discusses various types of authorization techniques.
- This case would probably have been affirmed before KSR.
- Reasons for combining prior art must still be explained.
- Winners provide at least some “unpredictable results.” (What could this applicant have argued? – some potential credit users are fearful of losing their password and others are especially prone to forgetting their password. . . the invention opens protected credit transactions to a whole new segment of the population. A $20k study could probably support this theory…)