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Obviousness in Ex Parte Hughes at the BPAI

By Lawrence B. Ebert, Esq.

The blog 12:01Tuesday discusses the BPAI decision Ex Parte Hughes.

Of the obviousness component, from KSR:

?Common sense teaches . . . that familiar items may have obvious
uses beyond their primary purposes, and in many cases a person of ordinary
skill will be able to fit the teachings of multiple patents together like pieces
of a puzzle.? [KSR, 550 U.S. at 420.]

(...)

Thus, a person with ordinary skill in the art would know to use a persistent memory for file back,
and not to transact real time operations given such limitations. This is
because the Appellants? system is a solution to a problem where there are
only a finite number of identified, predictable solutions exist, namely, using
a faster system to book transactions as opposed to one which is slower, and
thus success is likely the product not of innovation but of ordinary skill and
common sense. See KSR, 550 U.S. at 421.

(...)

Thus, a person with ordinary skill in the art would look to Silverman,
and with the goal of keeping updates immediate, would place the order book
in Marks de Chabris in the main memory thereby insuring faster updates.
See KSR, 550 U.S. at 418 (In making the obviousness determination one
?can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.?).

(...)

As found supra, the processes operated at the main memory are
speedier than those at the persistent memory. Thus, it is matter of common
sense to effect processing at the speedier of the two places, in the manner set
forth in claim 4. See KSR, 550 U.S. at 421.

The question posed by the 12:01 blog was: do you think the Board erred when
it reversed the examiner's 101 rejection of this claim?

See also

KSR v. Teleflex: story-telling is nice, but...

Full post as published by IPBiz on January 03, 2010 (boomark / email).