# Presentation: 377420

## Determining Obviousness Under 35 U.S.C. § 103After KSR v. Teleflex

**TC2800 Examples**

**Notes:**
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

## 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.

**Notes:**
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

_*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 

- _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. 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 B teaches a hearing aid assembly which may be inserted into the user's ear, and is connected to an earring.

- Reference A teaches an ear plug connected to a pair of glasses, rather than an earring.

**Notes:**
Speaker notes:  Reference B evidences a known method for supporting a sound modifying device through using an earring.

## A. Combining Prior Art Elements According To Known Methods To Yield Predictable Results

-   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.

- Applying This Rationale:

**Notes:**
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.

## A. Combining Prior Art Elements According To Known Methods To Yield Predictable Results

-   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."

- Applying This Rationale:

**Notes:**
Speaker notes:  The known method is directed to the manner of supporting a sound modifying device by an earring.

## B. Substitution Of One Known Equivalent Element For Another To Obtain Predictable Results

_**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 B discloses A semiconducting thin film device on a substrate and uses ***bonding wires 21*** extending from
***bumps 15***.

- Reference A discloses semiconducting device 20 that includes everything claimed except it uses ***conductive leads**** ****25**** instead of bonding wire *extending from ***bumps 11***.

**Notes:**
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.

## B. Substitution Of One Known Equivalent Element For Another To Obtain Predictable Results

-   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.

- Applying this rationale:

**Notes:**
Speaker notes:  Again, the references provide evidence of the conclusion that the wires and leads are functional equivalents.

## B. Substitution Of One Known Equivalent Element For Another To Obtain Predictable Results

-   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.

- Applying this rationale:

**Notes:**
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.

- Substrate

- Substrate

- Liquid Crystal Layer

- _Barrier Coating_

- _Cholesteric Filter_
- _Layer_

- _Cholesteric Color Filter_

- Adapted from Application No. 10/191,445

## C. Use Of Known Techniques To Improve Similar Devices In The Same Way

- Reference B teaches applying a *barrier coating 78 *to a color filter 86* to prevent oxidation of the color filter.*

- 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.

## C. Use Of Known Techniques To Improve Similar Devices In The Same Way

-   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.

- Applying This Rationale:

**Notes:**
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

-   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.

- Applying This Rationale:

**Notes:**
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.

## 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_

- Vehicle Body

- Electrical Load

- Conductive Probe

- Adapted from Application No. 10/121,226

**Notes:**
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.  

## D. Use Of Known Technique To A Known Device Ready For Improvement To Yield Predictable Results

- Reference B teaches a generator using Earth’s magnetic field having a long wire 307 on a vehicle body 301.

- Reference A teaches a generator using Earth’s electrostatic field and meeting all the claimed elements, except for a vehicle body.

- Magnetic
- Field
- Lines

**Notes:**
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.

## D. Use Of Known Technique To A Known Device Ready For Improvement To Yield Predictable Results

-   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.

- Applying This Rationale:

**Notes:**
Speaker notes:  The known technique is supporting a tether/probe by a vehicle body so as to achieve long lengths and increased energy.

## D. Use Of Known Technique To A Known Device Ready For Improvement To Yield Predictable Results

-   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.

- Applying This Rationale:

**Notes:**
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.*

_**E. “Obvious to Try” – Choosing From A Finite Number Of Predictable Solutions**_

- _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*.

- Computer Disc
- Substrate

- _Prior Art Reference_

## 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.

**Notes:**
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.

## 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.

- 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.

_**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.**_

- Adapted from Application No. 09/942,445

## 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

- Reference B discloses:
- A chip inductor device having a housing 16 with both the top and sides being made of the same polyimide resin.

- 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.

_**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.**_

- Semiconductor Device

## 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.

## 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.

## 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. 

- 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.

_**G. TSM: Teaching, Suggestion, Motivation Test**_

- 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.

**Notes:**
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.