Leonard R. Kahn (“Kahn”) appeals from the final decision of the Board of Patent Appeals and Interferences (“Board”) concluding that claims 1-20 in patent application number 08/773,282 (“the ’282 application”) are unpatentable as obvious under 35 U.S.C. § 103. 1 Because the factual findings underlying the Board’s conclusion are supported by substantial evidence, and because the Board did not commit legal error in concluding that the claims would have been obvious, we affirm.
I. BACKGROUND
A. The Invention
The ’282 application, filed on December 24, 1996 as a continuation-in-part of a series of continuing applications dating back to 1989, involves a “reading machine” that may be used by the blind. Prior to the application, machines that employed memory and display components by which material could be “read” using hand-held optical pens and speech synthesizers were known in the art. While a user can control these devices by hand to repeat words and to read at various speeds, such control is cumbersome, which makes it difficult for a blind user to study complex publications. Kahn addressed this problem and claims invention in a device that is operated by eye control and sound localization such that it can read out loud the word “looked at” by the user.
Kahn treats claims 1-20 as a group with claim 1 being representative:
1. A reading machine suitable for use by totally blind individuals for reading the complete text, or a selected portion thereof, of a document stored in storage means, at the option of the user, comprising:
(a) means of storing at least a portion of the text of the document to be read,
(b) means for retrieving a selected portion of said stored text made available for immediate “reading,”
(c) means for producing an acoustical display of the selected portion of said stored text, in a page-like format,
(d) means for determining the location on the acoustical display towards which the user is “looking,” and
(e) means for generating speech sounds verbalizing the word that is formatted to appear on the acoustical display at the location the user is “looking” towards.
A preferred embodiment of the ’282 patent is illustrated below in Figure 1.
*981 [[Image here]]
FBI
In operation,
[t]he information being “read” ... is fed through intermediate storage means to speech synthesizer means for converting the written information to electrical waves representing speech sounds. These electric waves are fed to ... a four speaker array wherein the speakers are located in a fashion so that the artificial sound image can be placed at various points on the artificial screen or page allowing the user to hear the words at the desired locations. These locations would be selected by the user looking at a specific location on the artificial screen or page.
The user would then move his or her eyes to “look” where the next word would be expected to appear, i.e., directly to the right of the spoken word. This would then cause the next word to be “spoken” and the sound image would appear slightly to the right. This motion is achieved by energizing the four speaker array with different levels of audio power....
When the user completes the “reading” of the last word on the page, ... the reader would have the option of rereading a section on the page or causing the page to be “turned.” If the user wishes to reread ..., he can direct his attention to the material to be reread by “looking” at the portion of the page where he remembers hearing the material.
On the other hand, if he wishes to continue reading the material he can turn the page by looking along the bottom line past the right hand edge of the “page”. The first word on the new page would be heard when the reader directed his or her attention to the upper left hand corner of the page where the first word on the new page would be expected.
’282 application at 11-13.
According to the specification, the device can employ a conventional scanner to input data; a conventional character recognition device to translate and send data to a storage device; and a page generator to take data from the storage device and format it for a visual display and for a word selector, the latter of which can send the data to a conventional speech synthesizer. After an optical sensor detects where a user is “looking” and a word is “selected” for vocalization, the synthesizer feeds an audio signal to a localizer control. *982 Loud speakers are arranged at the corners of the “page” to allow the user to confirm localization of sound. The specification further indicates that
[t]here are a number of devices available for sensing where an individual is looking. For example, Garwin et. al. 4,595,990 ..., Anderson et. al. 4,579,533 ... and Stanton 4,322,744 .... More specifically, Anderson’s [sic] patent discusses feed-back which may be visual, auditory or tactile to verify decisions by eye control equipment.
However, such inventions are not suitable for totally blind individuals who are not verifying where they are looking but are using their eyes to direct which part of the artificial page should be read to produce a sound image. This makes essential a two dimensional stereo sound stage which the blind person solely depends upon.
’282 application at 16.
B. The Prior Art
The Board’s rejection was based on Gar-win et al., U.S. Patent No. 4,595,990 (issued June 17, 1986) (“Garwin”), in view of Anderson et al., U.S. Patent No. 4,406,626 (issued Sept. 27, 1983) (“Anderson ’626”), Anderson et al., U.S. Patent No. 4,579,533 (issued April 1, 1986) (“Anderson ’533”), and Stanton, U.S: Patent No, 4,322,744 (issued March 30, 1982) (“Stanton”). The Board alternatively used Anderson ’626 or ’533 as primary references.
Garwin discloses an eye-controlled interactive information processor that senses the portion of a visual display at which the user is looking. The processor is connected to the display, which, in turn, can be partitioned so that different information is displayed in discrete areas. By gazing in different directions, the user informs the processor of the displayed item that is selected. Garwin, col. 2, 11. 60-68. The preferred embodiment employs a reflected light eye-tracking device to determine where the user is looking. Id, col. 3, 1. 66-col. 4,1. 62. The eye-interactive control generally uses a technique where the user is presented with a number of targets having some meaning, such as “words or phrases” displayed on screen. Id., col. 9, 11. 62-67. “Visual, auditory or tactile” feedback is then given to the user to indicate that a selection has been received. Id., col. 2,11. 10-11; col. 11,11. 59-64. The user then can verify or cancel the selection. Id., col. 10, 11. 1-6. Garwin states that “it will be apparent to one skilled in the art that ... the benefits of the invention will be achieved by many types of apparatus.” Id, col. 2,11. 50-53. It can be used' for “requesting] display of a page of text from a ... table of contents,” id, col. 3, 11. 42-44, or “[other] presentation of textual material,” id, col. TO, 11. 31-33.
Anderson ’626 discloses an interactive “electronic teaching aid” which enables a user viewing text on a display to designate any words or portion of text for immediate audible vocalization. Anderson ’626, col. 1, I. 8; col. 2, 11. 11-17. The components include: a selector switch, which when in the “text” position, causes data to be transmitted to a monitor and displayed in legible form, id, col. 3, 11. 27-31; an advance button, which when depressed allows the user to select and retrieve the next page of text from memory, id., col. 3, II. 31-41; a memory, which can store each word of the text coded for speech, id, col. 3, 1. 66-col. 4, 1. 6; and a word designator light pen, which the user can place on a word to hear the word vocalized through the speaker, id, col. 3,11. 54-68; col. 10,11. 51-58. Anderson ’533 discloses an improved microprocessor-based version of Anderson ’626. Anderson ’533, col. 1, 11. 19-24, 41-56.
*983 Stanton discloses an acoustical imaging system for use by visually impaired individuals that uses horizontal and vertical directional sound to represent visual aspects of an environment. Stanton states that a user can locate “the position of a virtual sound source as representing a point in space” such that different signals may represent different directions. Stanton, col. 1, 11. 58-61. The preferred embodiment features four loud speakers or transducers mounted at the corners of a vertical display panel. Id., col. 2,11. 54-55. When the user moves the cursor, the sound emanating from the speakers is phase shifted to produce a virtual sound seeming to come from a particular location related to the position of the cursor. Id., col. 1,1. 66-col. 2,1. 2; col. 2,11. 55-63. In another embodiment, a quadraphonic headset is used in place of the transducers to achieve the effect of producing a virtual sound identifying a position. Id., col. 4,11. 26-35. Stanton states that the device may be used as a “rudimentary reading device.” Id., col. 1,11. 62.
C. The Board Decisions
Kahn filed the ’282 application with 22 claims as a continuation-in-part of application number 07/645,102 (“the ’102 application”), which was filed in 1991. The 102 application was a continuation-in-part of a series of abandoned continuing applications dating back to application number 07/338,597, which was filed in 1989. While claims 21 and 22 of the ’282 application are not at issue in this appeal, the Board addressed those claims on several occasions, which led to the creation of a substantial Board history. As a result, the final decision with respect to the obviousness rejection of claims 1-20 spans three decisions, which include Ex Parte Kahn, No.2004-1091 (B.P.A.I. June 30, 2004) (“2004 decision”); Ex Parte Kahn, No.2000-1130 (B.P.A.I. Feb. 24, 2003) (“2003 decision ”); and Ex Parte Kahn, No. 94-2233 (B.P.A.I. Sept. 21,1995) (“1995 decision ”).
In its 1995 decision, after reversing the examiner’s anticipation rejection, the Board sua sponte rejected the relevant claims under § 103. The Board found that Garwin taught “the concepts of determining where on a display screen a user is ‘looking’ ... and giving either visual or auditory feedback to the user” and that “[w]hile nothing specific is said as to acoustically reproducing a word displayed at that location, common sense ... indicated] that such an auditory feedback response is appropriate in view of such auditory feedback confirmation clearly suggested by Anderson ’533 or ’626.” 1995 decision, slip op. at 5 (emphasis in original). The Board found that “to whatever extent Garwin is not concerned with text per se, [the Anderson] references are” and “teach the advantages of text display with audio reproduction,” concluding that
the artisan would have found it to have been obvious to have modified Garwin for display of text passages and selection of works therefrom with vocalization thereof as feedback confirmation, all as taught by Anderson ’626 or ’533 ... [or] to have modified either of these Anderson references to use the eye control of Garwin so that the user’s hands would have been free for other tasks.
Id., slip op. at 5-6. The Board found that Stanton “teaches the benefit of acoustic imaging in reading systems” and that “[i]t would have, thus, been further obvious to the artisan to add advantageous acoustic imaging to either of the above-noted modified devices of Garwin or the Anderson patents which would have word positions acoustically and visually indicated.” Id., slip op. at 6.
In its 2003 decision, the Board expressly incorporated the findings and rationale *984 from both its 1995 decision and the Examiner’s Answer filed on April 24, 2000. 2003 decision, slip op. at 3-4. In the Answer, the Examiner had explained that Garwin teaches “a buffer memory which stores at least a portion of the information derived from sensing means and means for subsequently retrieving the sensed information,” “means for displaying stored written text,” and “means for determining which word of the displayed text the user is looking towards”; that Anderson ’626 teaches “means for generating speech sounds verbalizing the looked at word”; and that Stanton teaches “means for verbalizing each word the user’s eyes are directed towards in two dimensional stereo.” Examiner’s Answer at 5-6. Rejecting Kahn’s argument that hindsight drove the combination of references, the Board reiterated that the rationale of the 1995 decision was correct and explained that motivation “clearly is based upon a prospective look at the state of the art.” 2003 decision, slip op. at 8-11.
The Board addressed several other arguments. First, the Board rejected the argument that the invention’s intended use supports patentability, noting that “the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus [from] a prior art apparatus satisfying the claimed structural limitations.” Id. at 5-6. Second, the Board rejected the argument that because “the purposes of the [prior art] references ... are different from the [invention’s] purpose,” the invention is non-obvious, explaining that “[t]he law ... does not require that references be combined for reasons contemplated by an inventor” and that “prior art need not suggest the same problem set forth by appellant.” Id. at 6-7. Third, the Board rejected the arguments that features of a secondary reference be capable of incorporation into the structure of a primary reference and that the invention be suggested completely by one reference. Id. at 7. Finally, the Board rejected a “long-felt need” argument, explaining that Khan had not presented any objective evidence of a long-standing problem or long-standing need in the art. Id. at 11-12.
In its 2001 decision, the Board entered a final rejection of claims 1-20 based on its 2003 decision. Kahn timely appealed to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
II. DISCUSSION
A. The Parties’ Arguments
Khan advances two main arguments. First, Khan asserts that the Board’s finding of motivation to combine was unsupported by substantial evidence. Citing
In re Lee,
The Patent and Trademark Office (“PTO”) counters that Lee and Roujfet are distinguishable because here the Board identified motivations to combine the references based on specific statements in the references and on the nature of the problem to be solved. As to long-felt need, the PTO argues that Kahn proffered no actual evidence, and that Kahn’s argument alone is insufficient to rebut a prima facie case.
B. Standard of Review
A claimed invention is unpatentable if the differences between it and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the pertinent art. 35 U.S.C. § 103(a) (2000);
Graham v. John Deere Co.,
Substantial evidence is something less than the weight of the evidence but more than a mere scintilla of evidence.
Id.
at 1312 (citing
Consol. Edison Co. v. NLRB,
C. Analysis
In assessing whether subject matter would have been non-obvious under § 103, the Board follows the guidance of the Supreme Court in
Graham v. John Deere Co.
The Board determines “ ‘the scope and content of the prior art,’ ” ascertains “ ‘the differences between the prior art and the claims at issue,’ ” and resolves “ ‘the level of ordinary skill in the pertinent art.’ ”
Dann v. Johnston,
[t]o reject claims in an application under section 103, an examiner must show an unrebutted prima facie case of obviousness .... On appeal to the Board, an applicant can overcome a rejection by *986 showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness.
Rouffet,
Most inventions arise from a combination of old elements and each element may often be found in the prior art. Id. at 1357. However, mere identification in the prior art of each element is insufficient to defeat the patentability of the combined subject matter as a whole. Id. at 1355, 1357. Rather, to establish a prima facie case of obviousness based on a combination of elements disclosed in the prior art, the Board must articulate the basis on which it concludes that it would have been obvious to make the claimed invention. Id. In practice, this requires that the Board “explain the reasons one of ordinary skill in the art would have been motivated to select the references and to combine them to render the claimed invention obvious.” Id. at 1357-59. This entails consideration of both the “scope and content of the prior art” and “level of ordinary skill in the pertinent art” aspects of the Graham test.
When the Board does not explain the motivation, or the suggestion or teaching, that would have led the skilled artisan at the time of the invention to the claimed combination as a whole, we infer that the Board used hindsight to conclude that the invention was obvious.
Id.
at 1358. The “motivation-suggestion-teaching” requirement protects against the entry of hindsight into the obviousness analysis, a problem which § 103 was meant to confront.
See
35 U.S.C. § 103 (stating that obviousness must be assessed “at the time the invention was made”);
Dembiczak,
Although our predecessor court was the first to articulate the motivation-suggestion-teaching test, a related test— the “analogous art” test—has long been part of the primary
Graham
analysis articulated by the Supreme Court.
See Dann,
The motivation-suggestion-teaching test picks up where the analogous art test leaves off and informs the
Graham
analysis. To reach a non-hindsight driven conclusion as to whether a person having ordinary skill in the art at the time of the invention would have viewed the subject matter as a whole to have been obvious in view of multiple references, the Board must provide some rationale, articulation, or reasoned basis to explain why the conclusion of obviousness is correct. The requirement of such an explanation is consistent with governing obviousness law,
see
§ 103(a);
Graham,
A suggestion, teaching, or motivation to combine the relevant prior art teachings does not have to be found explicitly in the prior art, as
the teaching, motivation, or suggestion may be implicit from the prior art as a whole, rather than expressly stated in the references.... The test for an im *988 plicit showing is what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art.
In re Kotzab,
In considering motivation in the obviousness analysis, the problem examined is not the specific problem solved by the invention but the general problem that confronted the inventor before the invention was made.
See, e.g., Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc.,
In this case, Khan does not dispute that each element of his claimed invention can be found in either Garwin, Anderson ’533 and ’626, or Stanton, or that each reference lies in the pertinent art. Nor does Khan take issue with the Board’s finding that a person having ordinary skill in the art would have been motivated to modify Anderson ’533 or ’626 in view of *989 Garwin, or vice versa. See Garwin, col. 2, 11. 50-53, col. 10, 11. 31-35 (stating that “it will be apparent to one skilled in the art that ... the benefits of the invention will be achieved by many types of apparatus” which may be “virtually [any device] susceptible of control by a computer, including ... [those geared] to presentation of textual material”).
Rather, Khan’s challenge to the sufficiency of the evidence supporting the Board’s prima facie case is directed at the motivation to apply the teachings of Stanton to achieve the claimed invention. In the 1995 decision, the Board found that Stanton “teaches the benefit of acoustic imaging in reading systems.” The Board carefully examined the Anderson/Garwin combination and recognized that a skilled artisan confronted with the problem faced by Kahn would have been led by the teaching of Stanton “to add advantageous acoustic imaging” to the Anderson/Garwin combination so that it would have “word positions acoustically and visually indicated.”
Stanton teaches that “[its] invention relates to augmentation of vision of those who have lost vision or have had their visual faculties diminished,” col. 1, 11. 6-8, that it is “useful in teaching a deprivee to apprehend the position of a virtual sound source as representing a point in space,”
id.,
11. 58-59, and that it may be used as a “rudimentary reading device,”
id.,
11. 61-62. A skilled artisan, who knows of a “learning machine” that is capable of reading a word aloud by selecting the word on the screen at which the user is looking and seeks to provide a visually-impaired user better control over word localization,
4
would have reason to solve that problem by adding two-dimensional sound in view of Stanton’s express teaching that two-dimensional sound can be used to “substitute” for the lost sense of sight, to locate a point in space, and to create a “rudimentary reading device” for the visually impaired.
See Cross Med. Prods.,
We reject Khan’s argument that the Board overstated the knowledge of the person having ordinary skill in the art or employed improper hindsight in making its
prima facie
case. In both
Lee
and
Rouf-fet,
the Board recognized that the knowledge of the skilled artisan could provide the motivation to combine but concluded that no such knowledge was articulated and placed on the record.
Lee,
We find Khan’s remaining arguments unpersuasive. First, even if applying Stanton to Garwin resulted in a device that would be less effective for the purpose intended by Garwin, the teaching of the Garwin reference is not limited to the specific invention disclosed.
See In re Heck,
Finally, we note that Kahn had an opportunity to rebut the Board’s
prima facie
case by offering evidence of objective indicia of non-obviousness. Khan put on no evidence, but invites this court to take “judicial notice” of the long-felt but unresolved need for a device that will help the blind read. We must decline Khan’s invitation for the following reasons. First, “long-felt but unresolved need” is not the kind of undisputed fact to which courts are accustomed to taking “judicial notice” because a finding either way can “reasonably be questioned.”
See
Fed.R.Evid. 201(b) (“A judicially noticed fact must be one not subject to reasonable dispute in that it is either (1) generally known within the territorial jurisdiction of the trial court or (2) capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned.”);
In re Fielder,
III. CONCLUSION
Because the factual findings underlying the Board’s analysis, including the findings on motivation to combine, are supported by substantial evidence, we conclude that the Board did not err in rejecting claims 1-20 as prima facie obvious. Because Khan did not rebut the Board’s prima facie case, the Board’s decision is
AFFIRMED.
Notes
. The Board also affirmed its own rejection of claims 21 and 22 as being non-enabled under 35 U.S.C. § 112, ¶ 1; however, in his opening brief on appeal Kahn withdrew those claims, leaving only claims 1-20 before us.
. In
Graham,
Cook Chemical challenged the court’s reliance on a reference that it believed
*987
was not in a "pertinent prior art,” arguing that while the invention involved a container having a “pump sprayer,” the reference relatT ed to containers having "pouring spouts.”
. In In re Clay, we reasoned that
[i]f a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection. An inventor may well have been motivated to consider the reference when making his invention. If it is directed to a different purpose, the inventor would accordingly have had less motivation or occasion to consider it.
. Kahn does not argue that one of ordinary skill in the art at the time of the invention would be unaware of the nature of this problem, and there is nothing in the record to suggest this to be the case, unlike the facts in the decision of our predecessor court in
In re Sponnoble,