# Presentation: 148698

## TC 2600

*KSR Examples*

**Notes:**
These slides were used as the basis of an interactive training with small groups of examiners.

## 	The following are some rationales which may be used when formulating a 103 rejection:

(1)	Combining prior art elements according to known methods to yield predictable results.

(2) Simple substitution of one known element for another to obtain predictable results.

(3) Use of known techniques to improve similar devices (methods or products) in the same way.

(4) Applying a known technique to a known device (method or product) ready for improvement to yield predictable results.

MPEP 2141 III & MPEP 2143

- (1)	Combining prior art elements according to known methods to yield predictable results.
- (2) Simple substitution of one known element for another to obtain predictable results.
- (3) Use of known techniques to improve similar devices (methods or products) in the same way.
- (4) Applying a known technique to a known device (method or product) ready for improvement to yield predictable results.
- _[MPEP 2141 III](http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2141.htm#sect2141)__ & __[MPEP 2143](http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2143.htm#sect2143)_

*Exemplary Rationales*

**Notes:**
Introduction to the exemplary rationales enumerated in MPEP 2141
Emphasis on the fact that the exemplary rationales are not an all inclusive list of rationales

## 	The following are some rationales which may be used when formulating a 103 rejection:

(5) ”Obvious to try” – choosing from a finite number of identified, predictable solutions.

(6) 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/market place incentives if the variations are predictable to one of ordinary skill in the art.

(7) The TSM test. (Although the Supreme Court cautioned against an overly rigid application of TSM, it also recognized that TSM was one of a number of valid rationales that could be used to determine obviousness)

MPEP 2141 III & MPEP 2143

- (5) ”Obvious to try” – choosing from a finite number of identified, predictable solutions.
- (6) 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/market place incentives if the variations are predictable to one of ordinary skill in the art.
- (7) The TSM test. (Although the Supreme Court cautioned against an overly rigid application of TSM, it also recognized that TSM was one of a number of valid rationales that could be used to determine obviousness)
- _[MPEP 2141 III](http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2141.htm#sect2141)__ & __[MPEP 2143](http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2143.htm#sect2143)_

*Exemplary Rationales*

## Example 1 - The Claim

- Claim 5.  A consumer electronics device, comprising
- 	a memory which stores account information for an account holder and sub-credit limits and bioauthentication information for authorized users of the account;
- 	a bioauthentication device which provides bioauthentication information to the memory;
- 	a communication link; and
- 	a processor, which compares received bioauthentication information to stored bioauthentication information to detect a match, and finds an associated sub-credit limit corresponding to the received bioauthentication information, to enable a purchase over the response network via the communication network up to a maximum of the sub-credit limit, the processor sending the account holder information over the communication link only if the match is detected and the sub-credit limit is not exceeded.

**Notes:**
The Invention
Method and device for providing multiple person access to a single credit card account. Each person is given different credit limits to the same account by the owner of the account. Each person is verified using bioauthentication.

## Nakano discloses all of the elements of claim 5 except for Nakano’s authentication information is not provided by a bioauthentication device 

**Nakano** discloses all of the elements of claim 5 except for Nakano’s authentication information is not provided by a bioauthentication device
**Harada** discloses bio-authentication information as the identification information where the bio-authentication device provides the bio-authentication information that is a fingerprint further where the sensor is on the remote control.

**Notes:**
The Prior Art 
Nakano US 5845260
A charging method for use in an interactive on-line service where a server and terminals of users are mutually connected by a transmission medium, where a predetermined service is provided from the server to the terminals via the transmission medium, and where the fee for such service is collected from each user individually, includes the steps of opening, in the server, an imaginary account for a child of the relevant user with a limited maximum amount, and withdrawing from the imaginary account the fee for the service provided to the user's child.  The server can provide a predetermined service to the relevant user's child within a range of the limited maximum amount preset in the imaginary account.  When withdrawing the fee from the imaginary account, the server can restrict the service providable to the terminal.  Thus, the parent enables his child to receive a desired on-line service, such as on-line shopping or video-on-demand, on the basis of the child's own judgment by setting an upper limit of a service utilizable by the child and still limiting the services providable for the child, hence realizing promoted utilization of the service by children. 

Harada US 5721583
An interactive television system which can provide services such as entertainment programs to users or conduct electronic polls of users, formed of a central computer installation, a plurality of terminal apparatuses each bidirectionally communicating with the central computer installation via a CATV network and each providing video/audio inputs to a display apparatus, with each of the terminal apparatuses being linked to one or more remote control apparatuses whereby users can request services or participate in polling, and in which any message data such as a service request which is issued by a remote control apparatus is automatically accompanied by identifier information, read out from a memory of the remote control apparatus, for identifying that remote control apparatus, and may also be accompanied by personal information concerning a registered user of the remote control apparatus.  User recognition can be implemented by an arrangement such as a plug-in IC card interface section or fingerprint recognition section, for enabling restriction of each remote control apparatus to use by only a specific registered user, or to enable only a specific registered user to access certain services. 

## Example 1 - The Facts

-  A common usage of personal codes or personal identification numbers (PINs) to identify or authenticate users.
-  The art further shows that one of ordinary skill in the consumer electronic device art at the time of the invention would have been familiar with using bioauthentication information interchangeably with or in lieu of PINs to authenticate users.
-  It is also clear from an examination of the prior art that those of ordinary skill in the consumer electronic device art at the time of the invention would have been familiar with using bioauthentication devices to obtain bioauthentication information to identify users

**Notes:**
Evidence deduced from the references to Nakano and Harada.

## (2) Simple substitution of one known element for another to obtain predictable results.

- Since each individual element and its function, as described in claim 5, are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and that of the prior art rests not on any individual element or function but in the very combination itself; that is, in the substitution of Harada’s bioauthentication device for Nakano’s manual authentication means.

- (2) Simple substitution of one known element for another to obtain predictable results.

**Notes:**
BPAI  Decision Quotes
Where, as here “[an application] claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result”, KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1395 (citing United States v. Adams, 383 U.S. 50-51, 148 USPQ 479, 483 (1966)).  In that regard, Appellant has provided no evidence that replacing Nakano’s manual authentication means with Harada’s known bioauthentication means yields an unexpected result or was beyond the skill of one having ordinary skill in the art

Appellant has presented no evidence that combining the Nakano device with the Harada bioauthentication means would have required anything more from one of ordinary skill in the art than to substitute one authentication means for a more advanced one. Accordingly, we hold that the subject matter of claim 5 would have been obvious to one of  ordinary skill in the art given the teachings of Nakano and Harada.

## Example 2 - The Claim

- Claim 1.  A communication device comprising:
- 	a housing;
- 	a sensor disposed on a surface of the housing and responsive to a user macro-manipulation of the communication device to provide a sensor output, the sensor comprising a pair of spaced apart carbon fiber strips disposed on the housing; and
- 	a processor disposed within the housing, the processor operable responsive to receiving the sensor output to initiate a predefined communication associated with receipt of the sensor output.

**Notes:**
The Invention
Communication devices have become smaller with the advance of communication technology. For example, cellular telephone handsets have in recent years become increasingly smaller with a corresponding reduction in the size of the key pad buttons. Some cellular telephone handsets no longer include a numeric key pad and instead provide a liquid crystal display (LCD) touch screen interface for accepting user input. These traditional user input devices do not offer the user the opportunity to place a call from the handset silently and even in total darkness without looking at it, speaking to it or identifying and pressing one particular signal key. 

A user of a communication device (100) may initiate a communication, i.e., a telephone call, a text message, a page, an alert and the like, via a macro manipulation of the device (100), silently and in a clandestine manner without having to identify and activate a particularly button or sequence of buttons on the communication device.. The communication device (100) may include housing (102) into which is disposed a sensor (120)that is actuated by the user. An input from the sensor (120) is associated with a particular communication context. Responsive to the input from the sensor (120), the communication device (100) initiates the communication according to the define context.

This claim is the basis for applying
Simple substitution of one known element for another to obtain predictable results.
Combining prior art elements according to known methods to yield predictable results.
Use of known techniques to improve similar devices (methods or products) in the same way.

## Davis teaches a wireless telephone including a housing, and a sensor on the surface of the housing, responsive to user macro-manipulation (squeezing), to provide a sensor output . In Davis, when the user grasps the housing, the conductive nature of the human hand causes a capacitance switch to completes a circuit, which is detected by a switch detector. In response, the switch detector sends a signal to the controller. Davis teaches that the wireless phone may be controlled to initiate a communication (“send”), end a communication (“standby” or “on hook”), or redial a call responsive to receipt of the signal from the switch detector.

**Davis** teaches a wireless telephone including a housing, and a sensor on the surface of the housing, responsive to user macro-manipulation (squeezing), to provide a sensor output . In Davis, when the user grasps the housing, the conductive nature of the human hand causes a capacitance switch to completes a circuit, which is detected by a switch detector. In response, the switch detector sends a signal to the controller. Davis teaches that the wireless phone may be controlled to initiate a communication (“send”), end a communication (“standby” or “on hook”), or redial a call responsive to receipt of the signal from the switch detector.
**Naboulsi** teaches a vehicle safety system including a pair of sensors mounted on a steering wheel, which sensors are capable of sensing a physiological condition of the driver, including electrical skin conductivity of the driver’s hand while gripping the steering wheel.  Naboulsi gives several examples of types of sensors that convert pressure to an electrical signal, one being a carbon-type transducer. Naboulsi teaches a system sensors will enable use of a wireless telephone.

**Notes:**
Facts:
Davis teaches a wireless telephone including a housing, and a sensor on the surface of the housing, responsive to user macro-manipulation (squeezing), to provide a sensor output 
In Davis, when the user grasps the housing 302, the conductive nature of the human hand causes a current to flow between first plate 306 and second plate 308 (of a capacitance switch 304). This completes a circuit, which is detected by the switch detector 346. In response, the switch detector sends a signal to the controller.
Davis teaches that the wireless phone may be controlled to initiate a communication (“send”), end a communication (“standby” or “on hook”), or redial a call responsive to receipt of the signal from the switch detector. 
Naboulsi teaches a vehicle safety system including a pair of sensors mounted on a steering wheel, which sensors are capable of sensing a physiological condition of the driver, including electrical skin conductivity of the driver’s hand while gripping the steering wheel.Naboulsi gives several examples of types of sensors that convert pressure to an electrical signal, one being a carbon-type transducer. 
Naboulsi teaches a system in which the driver must place both hands on the steering wheel, sensed by sensors S1 and S2, before the system will enable use of a wireless telephone. 
Kim teaches a tactile sensor composed of a carbon fiber layer and two conductive layers on opposite sides of the carbon fiber layer. Pressure applied to the sensor reduces the electrical resistances measured across the carbon fiber layer (col. 2, line 66 to col. 3, line 4). 

## But ...

- Naboulsi shows that *other *sensors, *such as *“carbon-type,” may be used to effect wireless telephone operation in the same way that Davis’s capacitive sensors do. _Davis _is the reference relied upon to teach wireless telephone functions. As such, Naboulsi fairly suggests modifying Davis in order to arrive at the claimed invention.

- (2) Simple substitution of one known element for another to obtain predictable results.

**Notes:**
Discuss substituting the “carbon-type” sensor of Naboulsi  for the capacitive sensor of Davis
Davis shows spaced capacitive sensors of the on a mobile/cell phone housing for macro-manipulation of the phone
Naboulsi shows carbon-type sensors on a steering wheel of a motor vehicle for macro-manipulating a wireless phone
Rationale
Simple substitution of carbon-type sensors for capacitive sensors both for macro-manipulation of a wireless phone yielding the predictable result of operating a phone without actually see the phone keys
After discussing the rationale for the substitution for the first modification of Davis
Note the claim recites the use of “carbon fiber” and the two references merely suggest “carbon-type” sensor

## Davis and Naboulsi does not explicitly teach “carbon fiber”  strips

- Carbon fiber sensors were well known for performing the same function as capacitive-type sensors.
**Kim** teaches that it is known to manufacture a transducer that converts pressure to electrical energy using carbon fiber materials.

**Davis and Naboulsi does not explicitly teach “carbon fiber”  strips**

**Notes:**
Introduce an additional fact based on what was known to one of ordinary skill in the art
Official notice – Carbon fiber sensor were well known for performing the same function as capacitive-type sensors
Supported by the reference to Kim
Assume Naboulsi is not combinable to achieve the claimed invention
Rejection now based on Davis and Official Notice

## But ...

- It would have been obvious to use a sensor made of “carbon fiber” rather than a “carbon-type” sensor, because
- the modification of Davis to use carbon fiber sensors rather than capacitive sensors would have constituted the mere arrangement of old elements with each performing the same function it had been known to perform, the combination yielding no more than one would expect from such an arrangement

- (1) Combining prior art elements according to known methods to yield predictable results.

**Davis and Naboulsi does not explicitly teach “carbon fiber”  strips**

**Notes:**
Rationale
The modification of Davis to use carbon fiber sensors rather than capacitive sensors would have constituted the mere arrangement of old elements with each performing the same function it had been known to perform, the combination yielding no more than one would expect from such an arrangement
After the discussing the rationale
Note the claim actually recites “carbon fiber strips”

## Davis and Naboulsi does not explicitly teach “carbon fiber”  strips

- Carbon fiber has known advantages such as strength and light weight.

**Davis and Naboulsi does not explicitly teach “carbon fiber”  strips**

**Notes:**
Rejection based on Davis in view of Naboulsi in further view of Kim
Davis shows capacitive sensors for macro-manipulation of a wireless phone
Naboulsi shows carbon-type sensors for macro-manipulation of a wireless phone
Kim shows a carbon fiber sensor

## (3) Use of known techniques to improve similar devices (methods or products) in the same way.

- The use of carbon fiber sensors rather than “carbon-type” would have been a predictable modification – carbon fiber has known advantages such as strength and light weight, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way.

**Davis and Naboulsi does not explicitly teach “carbon fiber”  strips**

- (3) Use of known techniques to improve similar devices (methods or products) in the same way.

**Notes:**
Rejection based on Davis in view of Naboulsi in further view of Kim

## Example 3 - The Claim

- Claim 1. An information handling system comprising:
- 	a housing;
- 	electronic components disposed in the housing and operable to generate audio information output;
- 	one or more speakers disposed in the housing and operable to generate audible audio output from the audio information;
- 	a cord reel integrated in the housing and operable to retract and extend a cord;
- 	an earphone cord interfaced with the electronic components and with the cord reel;
- 	earphones interfaced with the earphone cord and operable to generate audible audio output from the audio information;
- 	earphones couplers associated with the earphone cord and operable to selectively couple or release the earphones and the earphone cord; and
- 	an audio output selector interfaced with the cord reel and operable to select the speakers to generate audible output if the earphones cord is retracted in the cord reel and to select the earphones to generate audible output if the earphone cord is extended from the cord reel.

**Notes:**
The Invention
Earphone storage mechanism is integrated with the information handling system housing (i.e. laptop computer), earphones remain conveniently available for use. The earphone cord is extended and retracted with the earphone cord reel so that tangles and other difficulties with cord storage are avoided.

## Grasso discloses an information handling system comprising: a housing; electronic components disposed in the housing and operable to generate audio information output ; one or more speakers disposed in the housing and operable to generate audible audio output from the audio information; a cord reel integrated in the housing and operable to retract and extend a cord; an earphone cord interfaced with the electronic components and with the cord reel ; earphones interfaced with the earphone cord and operable to generate audible audio output from the audio information; and an audio output selector interfaced with the cord reel and operable to select the earphones to generate audible output if the earphone cord is extended from the cord reel . Grasso disclose in the background that when earphones are selected speakers are disabled and vice versa.

**Grasso** discloses an information handling system comprising: a housing; electronic components disposed in the housing and operable to generate audio information output ; one or more speakers disposed in the housing and operable to generate audible audio output from the audio information; a cord reel integrated in the housing and operable to retract and extend a cord; an earphone cord interfaced with the electronic components and with the cord reel ; earphones interfaced with the earphone cord and operable to generate audible audio output from the audio information; and an audio output selector interfaced with the cord reel and operable to select the earphones to generate audible output if the earphone cord is extended from the cord reel . Grasso disclose in the background that when earphones are selected speakers are disabled and vice versa.
**Doss** discloses comprising earphone couplers associated with the earphone cord and operable to release the earphones from the earphone cord.

**Notes:**
The Prior Art
Grasso US 6011686A portable computer is provided with retractable ear phones. The ear phones can include ear buds with an outer cushion. The ear buds are retractably coupled with the portable computer by an audio cable. A retraction mechanism retracts the audio cable and ear buds into the computer. The portable computer has a cut out sized to receive the ear buds therein, which creates a place to store the ear buds during periods of non-use. To use the ear buds, a user removes the buds from the storage position, and pulls the audio cable from the computer. Pulling the audio cable activates the ear buds and disables an audio output device on the portable computer. To return the ear buds to a storage position, a retraction actuator is depressed which retracts the audio cable into the portable computer. Alternatively, the ear buds can be replaced or used in addition to an audio input device. The ear buds and/or audio input device can be provided on other devices, such as a portable keyboard. 

Doss US 6075857 
A motorcycle helmet formed from an impact resistant shell for covering and protecting the head of a user has audio receiver members mounted on the interior of the shell and has a microphone at one end of a boom within the helmet.  The microphone is located for use by the user at the front of the helmet while the boom has an adapter on the end opposite the microphone.  The microphone has conductors communicating with a connector which communicates with the electrical energy source and control cables.  The adapter is receivable within a socket formed by a channel in an extension of one of the receiver housings so that the microphone and boom may be mounted totally within the helmet.  The electrical power and control cables are connected to the microphone and the receivers by means of a quick-disconnect type connector and has a separate volume control for the microphone and for the receivers so that two motorcycle riders may adjust the audio system to their liking.  The modular arrangement provided by the two connectors permit elements, if broken, to be replaced readily without replacing the entire systems.
Difference
Earphones couplers associated with the earphone cord and operable to selectively couple or release the earphones and the earphone cord;

## (6) 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/market place incentives if the variations are predictable to one of ordinary skill in the art.

- When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.
- An artisan would have appreciated the convenience of the “two member ‘no-look’ quick connect/disconnect connector” taught by Doss . In particular, an artisan having ordinary skill and common sense would have clearly recognized that a rider dismounting a motorcycle would need to quickly disconnect the wired helmet from the coiled cable connected to the motorcycle wiring harness.

**Notes:**
BPAI Decision Quote
Thus, the combination of Grasso and Doss reasonably teaches and/or suggests the claimed invention in terms of familiar elements that would have been combined by an artisan having common sense using known methods to achieve a predictable result at the time of the invention. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” 

## Example 4 - The Claim

- Claim 1. An electric circuit interrupter comprising, in combination, means between which an arc is formed on interruption of the circuit, and a structure adapted to confine said arc having its arc confining surface formed of *fluorinated ethylene propylene.*

**Notes:**
The Invention
A circuit breaker in which an arc is formed when the circuit is interrupted and in which the arc-confining surfaces are made of fluorinated ethylene propylene (FEP).

## Lindell teaches an electric circuit interrupter having an arc-confining surface is of fiber and methyl methacrylate.

**Lindell** teaches an electric circuit interrupter having an arc-confining surface is of fiber and methyl methacrylate.
**Browne et al.** teach an electric circuit interrupter having an arc-confining surface is of polytetrafluoroethylene (TEFLON®).
**Gordon** patent and the sales bulletin were cited to show the obviousness of substituting FEP in the arc-confining surface for the materials used in the Lindell and Browne et al. circuit breakers. Gordon teaches that FEP approaches TEFLON® in its desirable qualities and is more tractable and that each can be used as electrical insulation. The DuPont sales bulletin reports essential equivalence in the “outstanding electrical properties” of FEP and TEFLON®. It discloses that FEP has high dielectric strength and that “like TEFLON® TFE resins, TEFLON® 100 has good arc resistance and will not carbon track.”

**Notes:**
CCPA Decision Quote
 Except for the use of this material the claimed structure is old. 

## (7) The TSM Test

- The disclosure in the DuPont bulletin would at least suggest to one skilled in the art to try fluorinated ethylene propylene in circuit breakers of the type shown in Lindell and Browne et al.

- (7) The TSM Test

**Notes:**
CCPA decided the there was a teaching, suggestion, and motivation in the prior art.

## Example 5 - The Claim

- Claim 1. A management process operating on a computer system that has cached documents stored on the computer system, the process comprising:
- 	displaying cache status information about the cached documents when a user digitally points to an address associated with one or more of the cached documents;
- 	displaying a percentage of the document that was previously cached with the cache status information; and
- 	allowing the user to digitally point to selected designated portions of the cached document and only loading the designated portions of the cached document.

**Notes:**
The Invention
A management process operating on a computer system that has cached addresses and documents stored on the computer system. The process displays cache status information about the cached documents when a user digitally points to an address associated with one or more of the cached documents. After the user views the cache status information, a user chooses between load options: 1) to load the cached document; 2) to load designated portions of the document either from the cache or with newly loaded and "fresh" content; or 3) to load a completely new or "fresh" document. Further, after the chosen document is loaded, visual indicia (such as a color coding scheme or highlighting) is used to distinguish between the portions of the document that are cached and fresh. The user is then given the three load options again.

BPAI applied three different rationales to affirm the rejection

## Gong discusses the problem of old information displayed on a Web page, noting that an inexperienced user may be unaware that a Web page contains "old" information retrieved from cache rather than only "new" information. Gong teaches that a browser usually retrieves a Web page either entirely from cache, or partly from cache and partly from the originating network server.  Gong explains that partial retrieval usually occurs automatically (i.e., without explicit user request). Gong teaches speeding up the operation of a browser by using caching techniques Gong also teaches that a status icon may be incorporated into a browser reload selection button to indicate that data in a currently viewed page is old or at least partially old and to make selection of the reload function by the user a natural extension of the status indication.  In addition, Gong does not teach that the user may decide to retrieve a Web page partly from cache and partly from the originating network server. 

**Gong** discusses the problem of old information displayed on a Web page, noting that an inexperienced user may be unaware that a Web page contains "old" information retrieved from cache rather than only "new" information. Gong teaches that a browser usually retrieves a Web page either entirely from cache, or partly from cache and partly from the originating network server.  Gong explains that partial retrieval usually occurs automatically (i.e., _***without explicit user request***_). Gong teaches speeding up the operation of a browser by using caching techniques Gong also teaches that a status icon may be incorporated into a browser reload selection button to indicate that data in a currently viewed page is old or at least partially old and to make selection of the reload function by the user a natural extension of the status indication.  In addition, Gong does not teach that the user may decide to retrieve a Web page partly from cache and partly from the originating network server.

**Notes:**
The Prior Art
Acharya US 6826593A method of fulfilling a request for information content with a user-selectable version of a file containing that information content.  Selection of a hyperlink to information content results in generation of a menu of versions of files containing that information content.  The menu displays options for versions which are derivable therefrom by a computer program for converting files from one version to another version.  Selection of an option for a materialized version results in transmission of the materialized version.  Selection of an option for a version which is not materialized results in derivation of the user-selected version from either a materialized version or any other version from which the user-selected version may be derived. 

Gong US 6243089 
Network browser applications are improved by providing visual status indications informing users that currently displayed pages are one of: old (outdated), partly old or new.  Conventional browser applications load old or partly old page information from a cache and new information from a (usually remote) server to which the browser links via a network.  A user expecting to view only new information (e.g. information that might be useless if out of date) is alerted by present status indications to request the browser to reload the entire page; which the user can do by operating a reload selector/icon conventionally presented by the browser.  Various alternative status indications are shown, along with potential associations of such with a reload selector button (or equivalent icon). 

## Acharya broadly teaches giving the user control over the process of selecting portions of a Web page for retrieval. After discussing the problem of latency, Acharya teaches that users are likely to welcome an option to retrieve a selected version of a file that can be provided relatively quickly. Acharya also teaches that users are likely to choose to reject some files, receive a selected version of other files fairly quickly, and would be willing to wait longer for a selected version of other files. Acharya further teaches that there are reasons other than latency why users desire control. In addition, Acharya teaches the technique of caching as a solution to the problem of latency. However, Acharya does not teach that the file selected by the user is a cached file and does not teach that the selected file that is transmitted to the user is a cached file. 

**Acharya** broadly teaches giving the user control over the process of selecting portions of a Web page for retrieval. After discussing the problem of latency, Acharya teaches that users are likely to welcome an option to retrieve a selected version of a file that can be provided relatively quickly. Acharya also teaches that users are likely to choose to reject some files, receive a selected version of other files fairly quickly, and would be willing to wait longer for a selected version of other files. Acharya further teaches that there are reasons other than latency why users desire control. In addition, Acharya teaches the technique of caching as a solution to the problem of latency. However, Acharya does not teach that the file selected by the user is a *cached *file and does not teach that the selected file that is transmitted to the user is a *cached *file.

**Notes:**
The Prior Art
Acharya US 6826593A method of fulfilling a request for information content with a user-selectable version of a file containing that information content.  Selection of a hyperlink to information content results in generation of a menu of versions of files containing that information content.  The menu displays options for versions which are derivable therefrom by a computer program for converting files from one version to another version.  Selection of an option for a materialized version results in transmission of the materialized version.  Selection of an option for a version which is not materialized results in derivation of the user-selected version from either a materialized version or any other version from which the user-selected version may be derived. 

Gong US 6243089 
Network browser applications are improved by providing visual status indications informing users that currently displayed pages are one of: old (outdated), partly old or new.  Conventional browser applications load old or partly old page information from a cache and new information from a (usually remote) server to which the browser links via a network.  A user expecting to view only new information (e.g. information that might be useless if out of date) is alerted by present status indications to request the browser to reload the entire page; which the user can do by operating a reload selector/icon conventionally presented by the browser.  Various alternative status indications are shown, along with potential associations of such with a reload selector button (or equivalent icon). 

## OR

- The prior art also teaches the known technique of giving the user control over selection of a portion of a Web page.  A person of ordinary skill in the art would have recognized that applying the known technique of giving the user control over the selection of a portion of a Web page would have yielded predictable results and would have improved the Web browser of Gong when selecting and loading cached Web pages. In addition, allowing the user to select and load portions of the cached Web page follows naturally and directly from Gong's teaching of a Reload button that makes "selection of the reload function a natural extension of" the Web page status indication.

- (4) Applying a known technique to a known device (method or product) ready for improvement to yield predictable results.

## OR

- A person of ordinary skill in the art would have had good reason to pursue the known options of giving the user control over selecting and loading documents when selecting and loading portions of a cached document. It would require no more than "ordinary skill and common sense," to give the user (rather than the computer program) control over digitally pointing to selected portions of a cached Web page and loading only those designated portions.

- (5) ”Obvious to try” – choosing from a finite number of identified, predictable solutions.

**Notes:**
BPAI Decision Quote 
One of ordinary skill in the art would have pursued the known potential solutions to the problem of latency with a reasonable expectation of success. Appellants have presented no evidence that giving the user (rather than the computer program) control over selection and loading of portions of a cached document "was uniquely challenging or difficult for one of ordinary skill in the art,“ nor have Appellants presented evidence that this "represented an unobvious step over the prior art". 

## (6) 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/market place incentives if the variations are predictable to one of ordinary skill in the art.

- The design incentive of solving the problem of latency would have prompted one of ordinary skill in the art to implement a predictable variation of the prior art system of Gong by applying the known principle of giving control to the user, disclosed in Acharya, to allow the user, rather than the browser, to point to selected designated portions of a cached Web page and only load those designated portions. The differences between the claimed invention and the prior art are encompassed by applying the known principle of giving control to the user to the system of Gong.

- (6) 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/market place incentives if the variations are predictable to one of ordinary skill in the art.

**Notes:**
BPAI Decision Quote
One of ordinary skill in the art, in view of the design incentives to solve the problem of latency, would have implemented the claimed variation of the prior art system of Gong. Also, the claimed variation would have been predictable to a person of ordinary skill in the art. As previously noted, Appellants have presented no evidence that giving the user (rather than the computer program) control over selection and loading of portions of a cached document "was uniquely challenging or difficult for one of ordinary skill in the art," Leapfrog, 485 F.3d at 1162, 82 USPQ2d at 1692, nor have Appellants presented evidence that this "represented an unobvious step over the prior art" id. 

## The Cases:

**The Cases:**
*Ex parte *STEFFEN RING - Appeal 2007-0481 (SN: 10/654,049)
*Ex parte *CAROLYN RAMSEY CATAN - Appeal 2007-0820 (SN: 09/734,808)
*Ex parte *RUDOLF BENDIXEN and MICHAEL BURCHETT - Appeal 2007-1780 (SN: 10/340,127)
*Ex parte *GERALD F. MCBREARTY, SHAWN P. MULLEN, and JOHNNY M. SHIEH - Appeal 2007-1340 (SN: 09/996,125)
*In re* LINDELL, 155 USPQ 521 (C.C.P.A. 1967)