For some time, I have wanted to do a post on this recent Fed. Cir. decision (Appeal No. 2015-2073 (Fed. Cir. , August 10, 2016),) in which the Fed. Cir. panel of Judges Moore, Linn and O’Malley (writing) reversed a PTAB decision finding most of the claims of U.S. Patent No. 7,917,843 obvious over a single prior art reference, U.S. Patent .No. 5,859,636 (“Pandit”). Claim 1 is more than a page long, and I will not try to describe it in any detail, except to say that it can be exemplified by the use of a computer program to build an address book.
The panel stated that the sole question was “whether the Board erred in finding that it would be ‘common sense’ to a person of ordinary skill in the art [POSA] to search for the telephone number that is detected in a document when the ‘Add to address book’ option disclosed in Pandit is selected….The Board found that it would be ‘reasonable to presume, as a matter of common sense’ that Pandit would search for duplicate phone numbers and information associated with such numbers.”
The panel first acknowledged that KSR had rejected a “rigid” approach requiring the reference(s) to contain a teaching, suggestion or motivation in resolving the obviousness question, but required consideration of “common sense, common wisdom, and common knowledge in analyzing obviousness.”
OK so far, but it recently dawned on me that “common sense” is an abstract idea if there even was one as, “He simply lacks common sense,” or “Common sense would tell you not to drive so fast on that narrow road.” As most of us practitioners know, Examiners find it all too convenient to apply common sense to modify or arrange claim elements, even though they are expected to be applying the common sense of the POSA – not their own expertise – and not assembling a rejection using hindsight knowledge of the invention as a guide.
But I digress, so let’s return to the panel’s evaluation of the use of common sense in this decision. The panel noted that there are “at least three caveats to note in applying ‘common sense’ in an obviousness rejection.” The first is that common sense should be invoked to provide an otherwise missing motivation to combine, not to supply a missing claim limitation” as in “common sense” would cause the POSA to make phone keys and the print on them larger so that they could be more easily used by persons with limited eyesight (my example).
The panel continued: “[I]n Perfect Web…in which common sense was invoked to supply a limitation that…was missing from the prior art, the limitation in question was unusually simple and the technology particularly straightforward…By contrast, the missing search at issue here ‘plays a major role in the subject matter claimed.”‘
Third, and perhaps most important, the panel wrote that “references to common sense…cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art reference specified….the Board’s utter failure to explain the ‘common knowledge and common sense’ on which it relied is problematic.” Citing In re Zurco, 258 F.3d 1379 (Fed. Cir. 2001). In this case, it was problematic enough for the Fed. Cir. to reverse. The Board is expected to “explain all material facts relating to a motivation to combine.” Citing In re Lee. “While ‘common sense’ can be invoked…it must still be supported by evidence and a reasoned explanation.”
I am not sure what the Supreme Court would think of this gloss on KSR – which involved a minor change in known elements -but in requiring an evidentiary base for the use of common sense, the Fed. Cir. may be edging back into requiring a teaching, suggestion or motivation in the art to support an obviousness finding. How else can the requirement for a showing of material facts relating to the motivation to combine be supplied?