Although the single ground of invalidity is alleged to be based on Aytac (Ex. 1005) in view of the SCSI Specification (Ex. 1006), the MS-DOS Encyclopedia (Ex. 1007), and alleged admitted prior art, Petitioner fails to provide a proper obviousness analysis, including considering each claimed invention as a whole, identification of the limitations not disclosed by Aytac, identification of where those limitations are taught by the SCSI Specification or the other asserted prior art, why and how the particular combination would have been made, i.e., “articulated reasoning with some rational underpinning to support the conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
The ’449 Patent recognizes that the existing options were wasteful and inefficient and presents a solution that would achieve high data transfer rates, without specialized software, while being sufficiently flexible to operate independent of device or host manufacturers.
To determine whether there was a reason to combine known elements in the manner claimed, it is often 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.” KSR, 550 U.S. at 418.
The Federal Circuit affirmed, holding that “the Board cannot accept general conclusions about what is ‘basic knowledge’ or ‘common sense’ as a replacement for documentary evidence for core factual findings in a determination of patentability” and stating that reliance on such conclusory statements “lacks substantial
Aytac further states that: As a standalone unit, CaTbox implements the following functions: a. print files found in a spool directory and pointed to in a queue b. receive faxes and print them or store them on CaTdisc c. send faxes driven by keypad d. receive voice mail and store them on CaTdisc e. play voice mail back driven by keypad f. copy from scanner to printer g. other functions that may be programmed such as email retrieval, faxback and data modem based TCP/IP/PPP node, dial a phone number.