In re Index Sys.

When there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.

Opinion (Prost): Index Systems, Inc. appeals a US Patent and Trademark Office (USPTO) ruling that their '523 patent claim was obvious and therefore unable to receive patent.

The '523 patent describes a television-based software method that allows a user to restrict television programming according to the rating, or content. The user may choose to block television programs using a combination of criteria such as ratings and content.

On March 9, 2012, the examiner issued a Final Rejection of the claim for obviousness in two references. A prior patent, Casement, already teaches such an interface allowing the user to control access to television content. Additionally, prior art EIA-744 publication set forth by the Electronic Industries Association describes a standard way that content and ratings can be combined. As such, the claim in the '523 patent, which is similar to both Casement and EIA-744, was deemed obvious by the examiner.

The Court cited 35 U.S.C. Section 103 in its analysis of the obviousness of a claim which states "A patent for a claimed invention may not be obtained . . . if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art to which the claimed invention pertains."
When the Court reviewed the application process it affirmed the determination that a person of "ordinary skill in the art would have consulted EIA-744". Furthermore, under the Supreme Court's "obvious-to-try" if "there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense."

In this case, the menu description and method claimed by Index Systems, Inc. are similar to the matrix shown in either Casement or EIA-744. As a result, the USPTO’s rule that the ‘523 patent, was rejected as obvious is AFFIRMED.