Obviousness

An analysis of the obviousness of U.S. Patent No. 5,978,773 ("the '773 patent") under 35 U.S.C. § 103 requires an evaluation of the prior art from the perspective of a Person Having Ordinary Skill in the Art (PHOSITA) at the time of the invention, with a priority date of June 20, 1995.

A PHOSITA in mid-1995 would likely possess a bachelor's degree in computer science or a related field, coupled with practical experience in computer networking, database management, and the use of common input peripherals like barcode scanners. This individual would be aware of the explosive growth of the public internet and the World Wide Web, the function of URLs, and the use of browsers to access information. They would also be familiar with the ubiquitous use of the Universal Product Code (UPC) in retail for point-of-sale and inventory management.

The independent claims of the '773 patent generally describe a system where a standardized product identifier (like a UPC) on an article of commerce is read by an input device, which then prompts a database to return an associated network address (like a URL) to access a remote computer. Based on the prior art of record, the combination of existing technologies and knowledge would have rendered this invention obvious.

Primary Obviousness Combination: EP 0565293 A2 in view of the Ubiquity of Standardized Product Codes (UPCs)

The strongest argument for obviousness stems from combining the teachings of European Patent Application EP0565293A2 ('293 application) with the common knowledge of UPCs as a standard for product identification.

• What the '293 Application Teaches: The '293 application, published in October 1993, discloses the core of the '773 system: an information system where a user scans a barcode (e.g., in a magazine advertisement) to retrieve more detailed information about a product from a database. This reference teaches the fundamental process of using a scanned code to initiate a database lookup for product-related information.

• Common Knowledge (UPCs): By 1995, UPC barcodes were the unchallenged standard for identifying articles of commerce in the United States. A PHOSITA would know that nearly every consumer product already possessed a unique, machine-readable identifier directly on its packaging.

• Motivation to Combine: The system in the '293 application requires a company to generate and print a new, proprietary barcode in its advertisements to link to the database. A PHOSITA, seeking to create a more efficient and broadly applicable system, would have been immediately motivated to use the identifier that was already on the product itself: the UPC. The motivation is one of pure efficiency and practicality. Why create a new, redundant code when a universal, standardized code already exists for the exact purpose of identifying a product? Substituting the proprietary barcode of '293 with the standard UPC is not an inventive leap but an obvious design choice to make the system more universal and eliminate the unnecessary step of creating and printing new codes. The goal remains identical to that of '293—linking a product to information—but the implementation is improved by using a pre-existing, superior tool for the job.

• Reasonable Expectation of Success: A PHOSITA would have a high expectation of success. The UPC is simply a number that can be used as a primary key in the database described by '293. The growing World Wide Web provided the obvious medium for the "detailed information" to be retrieved. Therefore, modifying the '293 database to store URLs corresponding to the UPC keys would have been a straightforward and predictable implementation to a PHOSITA in 1995. This combination anticipates all key elements of the '773 patent's independent claims: an input device reading a standardized code from an article of commerce to retrieve a network address from a database.

Secondary Obviousness Combination: U.S. Patent No. 5,305,195 in view of the World Wide Web

An alternative, yet also compelling, argument can be made by combining U.S. Patent No. 5,305,195 ('195 patent) with the well-established existence of the World Wide Web as a platform for disseminating information.

• What the '195 Patent Teaches: The '195 patent, published in April 1994, discloses a system where a user scans a barcode from a catalog to retrieve product information from a remote computer for ordering purposes. This teaches the fundamental concept of scanning a code associated with a product representation to retrieve data about that product from a remote database. The main limitation is that it is described in the context of a closed, proprietary ordering system.

• Common Knowledge (The World Wide Web): In the 1994-1995 timeframe, the World Wide Web was becoming the de facto standard for companies to provide product and marketing information to the public. URLs were the established addressing scheme for this global network.

• Motivation to Combine: The '195 patent's system is aimed at making it easier for a consumer to get information about a product and act on it. A PHOSITA would have been motivated to adapt this system to the most powerful and open information-retrieval network available: the World Wide Web. It would have been an obvious extension to have the database in the '195 system return not just internal ordering data, but the public URL for the product's information page. This would broaden the system's utility from a mere ordering tool to a general-purpose information gateway, a clear and desirable improvement. The motivation is to update an existing concept (remote data retrieval via barcode) with a superior and more universal technology (the Web) for information delivery.

This combination of the '195 patent with the known architecture of the World Wide Web teaches the core of the '773 invention. U.S. Patent No. 5,420,943 further supports this by teaching a simple, "keyboard-emulation" method for the scanner to input the data into the local computer's browser, making the technical implementation of such a system trivial and predictable.

Conclusion

The independent claims of US5978773 do not represent an inventive leap, but rather the predictable application of existing technologies to a known standard. The core ideas—using scanners to look up information in databases ('293, '195) and the use of UPCs to identify products—were well-established. The motivation to combine these elements to link physical products to the burgeoning World Wide Web would have been high, driven by a desire for efficiency and to leverage the most powerful information network of the day. A person having ordinary skill in the art in 1995 would have found it obvious to create a system that uses a product's existing UPC to look up its corresponding URL in a database. Therefore, the claims of U.S. Patent No. 5,978,773 are rendered obvious under 35 U.S.C. § 103.