It is generally not obvious to reach across fields and select an admittedly undesirable feature with which to modify another prior art reference. Here, for example, no motivation to combine was found for modifying a primary reference directed to a mobile phone with a particular unlocking mechanism from a research paper because the research paper was for a wall-mounted air conditioning controller and in fact identified the particular unlocking mechanism as the second to last preference among consumers. “Common sense and real world indicators indicate that to conclude otherwise would be to give in to hindsight, to allow the exact ex post reasoning against which the Supreme Court cautioned in Graham and KSR.” This would be a good case to consult and cite in response to an obviousness rejection that picks and chooses relatively arbitrary features from only tangentially-related art.
Background / Facts: The patents being asserted here are directed to various smartphone features, including a “slide to unlock” feature. This unlock feature addresses the issue of unintentional activation or deactivation of the smartphone due to inadvertent contact with the touch screen, a problem that is commonly referred to as “pocket dialing.” The prior art includes a mobile device that uses a different unlocking mechanism and a consumer research paper that lists a slider-based unlocking mechanism, but only for a wall-mounted air conditioning controller and only as a least-preferred option.
Issue(s): Whether an ordinary artisan would have been motivated to combine elements from the wall-mounted touchscreen for home appliances and a smartphone, particularly in view of the pocket dialing problem specific to mobile devices that the claimed invention sought to address.
Holding(s): No. “Common sense and real world indicators indicate that to conclude otherwise would be to give in to hindsight, to allow the exact ex post reasoning against which the Supreme Court cautioned in Graham and KSR. …Though the prior art references each relate to touchscreens, the totality of the evidence supports the conclusion that it would not have been obvious for a skilled artisan, seeking an unlock mechanism that would be both intuitive to use and solve the pocket dialing problem for cell phones, to look to a wall-mounted controller for an air conditioner. … That a skilled artisan would look to the [research] paper directed to a wall-mounted interface screen for appliances and then choose the slider toggle, which the study found rated fifth out of six options in usability, to fulfill a need for an intuitive unlock mechanism that solves the pocket dialing problem for cell phones seems far from obvious.”