A change in specific functionality does not automatically negate a combination of prior art elements in establishing obviousness. Here, for example, modifying a prior art reference’s telephone speaker to perform the claimed announcing of a caller’s identity as well as its conventional voice signal functionality was found to be obvious because the prior art elsewhere taught that telephone speakers could perform multiple functions, even though the prior art did not specifically mention a caller identification function. “KSR does not require that a combination only unite old elements without changing their respective functions.” This would be a good case to consult before responding to an obviousness rejection in which the functionality of one of the components changes.
Background / Facts: The patent on appeal here from reexamination proceedings at the PTO is directed to a call-screening system that verbally announces a caller’s identity before the call is connected. Because the system uses the same “audio transducer” (i.e., speaker) for announcing both a caller’s identity and telephone voice signals, the purported invention does not require a special telephone, auxiliary display terminal, or speaker to let users screen calls. The PTO acknowledged that the prior art did not disclose using a single speaker for announcing both voice signals and identity information.
Issue(s): Whether this feature would have nevertheless been obvious given the prior art’s disclosure that a speaker in a telephone system can desirably produce audio derived from multiple types of data within a telephone system.
Holding(s): Yes. “The rationale of KSR does not support [the patentee’s] theory that a person of ordinary skill can only perform combinations of a puzzle element A with a perfectly fitting puzzle element B. To the contrary, KSR instructs that the obviousness inquiry requires a flexible approach. [] Here, the Board faithfully applied this flexible approach to find that the combination of [prior art] ‘would have resulted in no more than [a] predictable result.’”