Ex Parte Kortum

Board of Patent Appeals and Interferences

Feb 12, 2009

09847045 (B.P.A.I. Feb. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PHILIP TED KORTUM
____________

Appeal 2008-5184
Application 09/847,045
Technology Center 3600
____________

Decided:1 February 13, 2009
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU
R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-5184
Application 09/847,045

2
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 3-8, 10-16, and 18-20 which are all the pending claims
remaining in the case. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is directed to a process and kit for
DSL self-installation wherein the entire installation process is described
within a single instruction manual. (Specification, 4:15-21). Claim 1,
reproduced below, is representative of the subject matter of appeal.

1. A digital subscriber line self installation kit
comprising:

a digital subscriber line modem;

at least one digital subscriber line filter;
a computer readable medium whose
contents comprise computer readable connection
software code; and

at most one instruction manual which
describes a unified installation process which
provides instructions to install all of the digital
subscriber line modem, the at least one digital
subscriber line filter, and the computer readable
connection software code, wherein the instruction
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Application 09/847,045
3
manual requires no operating system selection by a
user and wherein the at most one instruction
manual corresponds to an operating system of the
user.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
SBC Global Network DSL: Customer Self Install; the Internet printout of
SBC Global Network-Digital Subscriber Line (http://web.archive.org)
August 2000 (hereinafter the “SBC Global” reference).
Using Your Gateway PC Guide; Guide Instruction Manual (1997)
(hereinafter the “Gateway PC” reference).

The following rejections are before us for review:
1. Claims 1, 3-8, 10-16 and 18-20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the SBC Global and Gateway PC reference.

THE ISSUE
At issue is whether the Appellant has shown that the Examiner erred
making the aforementioned rejections.
This issue turns on whether it would have been obvious to modify the
SBC Global reference to include an instruction manual as disclosed by the
Gateway PC reference.
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FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence2:
FF1. The SBC Global reference is directed to a customer self-installing a
DSL service system (Page 1).
FF2. The SBC Global reference discloses that the equipment includes a
DSL modem (Page 4, last paragraph).
FF3. The SBC Global reference discloses that microfilters are used in the
self-install (Page 1, third paragraph).
FF4. The SBC Global reference discloses that an operating system and hard
disk space are used (pages 5 and 8-9) in the system which shows that
software is used in installing the program.
FF5. The Gateway PC reference discloses an instruction manual for
assembling a personal computer.
FF6. It is taken as well known that a variety of devices include a single
instruction manual for assembling a kit or system.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18,
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 127 S. Ct. at 1739, (citing Graham, 383
U.S. at 12 (emphasis added)), and reaffirmed principles based on its
precedent that “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” The Court also stated “[i]f a person of ordinary skill can implement
a predictable variation, § 103 likely bars its patentability.” Id. at 1740. The
operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id.
The Court noted that “[t]o facilitate review, this analysis should be
made explicit.” Id. at 1741 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
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6
with some rational underpinning to support the legal conclusion of
obviousness”)). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.

ANALYSIS
The Appellant argues as a group the rejection of claims 1, 3-8, 10-16
and 18-20 under 35 U.S.C. § 103(a) as unpatentable over the SBC Global
and Gateway PC references. We select claim 1 as representative of this
group and the remaining claims stand or fall with claim 1. See 37 C.F. R. §
41.37 (c)(1)(vii) (2007).
The Appellant argues that the rejection of claim 1 is improper because
“The SBC Document also does not disclose or suggest that the at most one
instruction manual provides instructions to install all of the digital subscriber
line modem, the at least one digital line filter, and the computer readable
connection software” (Br. 4). The Appellant further argues that the Gateway
PC reference “fails to fill the gaps” (Br. 5). Specifically, the Appellant
argues that the Gateway PC reference guide is for a personal computer and
describes information for connecting a keyboard, mouse, speakers, etc (Br.
5). The Appellant argues that the Gateway PC reference does not disclose a
digital subscriber line modem and digital subscriber line filter (Br. 5). The
Appellant argues that if a modem was ordered that it was ordered with the
computer and pre-installed (Reply Br. 2).
The Examiner has not asserted that the SBC Global reference teaches
the use of an instruction manual (Ans. 4). The Examiner has determined that
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the Gateway PC reference shows instructions on how to assemble the
various components of a computer. The Examiner’s position is that it would
have been obvious to modify the SBC Global reference to include an
instruction manual to allow the customer to have the necessary diagrams and
installation steps to simplify installation of the system (Ans. 4). The
Examiner states that while the Gateway PC document does not specifically
refer to a DSL modem, it does provide detailed instructions of how to
connect various parts of an electronic system and it would have been
obvious to include a similar manual in the SBC Global reference to help a
customer in the installation steps (Ans. 4-5). The Examiner further states
that it is common practice to include instruction manuals with even simple
mechanical or electrical devices (Ans. 8).
We agree with the Examiner. In KSR, the Supreme Court rejected the
Federal Circuit’s rigid application of its teaching, suggestion, motivation test
in favor of an expansive and flexible approach. Id., 127 S. Ct. at 1739. The
Supreme Court noted that often, it will be necessary
to look to interrelated teachings of multiple
patents; the effects of demands known to the
design community or present in the marketplace;
and the background knowledge possessed by a
person having ordinary skill in the art, all in order
to determine whether there was an apparent reason
to combine the known elements in the fashion
claimed by the patent at issue.

Id., 127 S. Ct. at 1740-41. The Supreme Court also noted that “the analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” Id.,
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127 S. Ct. at 1741. Here, the SBC Global reference shows a DSL system for
self installation including a DSL modem, DSL filter, and software code
(FF1, FF2, FF3) and the Appellant has not disputed this. The Gateway PC
reference discloses an instruction manual for assembling a personal
computer (FF5). A variety of other devices also include a single instruction
manual to aid in assembling a device (FF6) and the Gateway PC reference is
an example of such an instruction manual. Instruction manuals simply
provide a user assistance in assembling together any kit, product, or system
with instructions or diagrams specific to that system. One of ordinary skill
in the art could readily infer that it would be beneficial to create an
instruction manual specifically for the SBC Global DSL system to aid in
assembly as taught by the Gateway PC reference and known in the art. We
therefore conclude that it would have been obvious to one of ordinary skill
in the art at the time the invention was made to modify the SBC Document
to include an instruction manual specific to that system for the benefit of
assisting a person in assembling the device as taught by the Gateway PC
reference. For the above reasons the rejection of claims 1, 3-8, 10-16 and
18-20 under 35 U.S.C. § 103(a) as unpatentable over the SBC Global and
Gateway PC references is sustained.

CONCLUSIONS OF LAW
We conclude that Appellant has failed to show that the Examiner
erred in rejecting claims 1, 3-8, 10-16 and 18-20 under 35 U.S.C. § 103(a) as
unpatentable over the SBC Global and Gateway PC references.
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DECISON
The Examiner’s rejection of claims 1, 3-8, 10-16 and 18-20 is
sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

AFFIRMED

hh

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