While a fairly fact-specific inquiry, in general, an ancillary and otherwise generic component will not by itself render a claim for the combination non-obvious. Dependent claims directed to such components should specifically recite how they are integrated with the claimed invention as a whole.
Background / Facts: The patent on reexamination here is directed to seamless integration of line switching (also referred to as circuit switching) and packet switching in a telecommunications network. A conventional telephone transmission uses line switching, whereas the Internet uses packet switching, which is less expensive but can cause significant time delays when there is a large amount of data to be transmitted. Although independent claims 84 and 100, which recite the core concept of changing-over between packet switching and line switching, were found by the Board to be obvious if not anticipated, the Board nonetheless reasoned that claims 91 and 104 depending therefrom and adding only a line switching multiplexer would not have been obvious because “[t]he multiplexing disclosed in [the prior art] is not disclosed to support changing-over between switching networks for data transfers having real-time properties.”
Issue(s): Whether addition of a “multiplexer” to the line switching circuitry renders the changing-over between switching networks non-obvious.
Holding(s): No. “Claims 91 and 104 do not require the multiplexer itself to ‘support changing-over between switching networks.’ … The claimed multiplexer resides in ‘the line switching device’ and ‘multiplex[es] data of several origin end terminals over a single line connection through the line-switching network.’ … That independent claims 84 and 100 recite changing-over between packet switching and line switching does not mean claim 91 and 104’s multiplexer must do the same, especially when the multiplexer is expressly limited to the line-switching network. The Board found that [the prior art’s] multiplexer is ‘used for multiplexing signals from different line interfaces’ … and claim 91 and 104’s multiplexer requires no more, especially under the broadest reasonable interpretation. … Once the proper scope of claim 91 and 104’s multiplexer is understood, it is apparent that including such a multiplexer in the combination of [prior art references] is no more than ‘the predictable use of prior art elements according to their established functions.’”