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With the CAFC’s decision in Perfect Web Technologies, Inc. v. InfoUSA, Inc., 2009-1105 (Fed. Cir. Dec. 2, 2009), it struck me that the court was easing away from its precedent in In re Zurko, 258 F.3d1379 (Fed. Cir. 2001) that required some factual underpinning for an assertion of “common sense.”  Indeed, in the oral argument of Perfect Web, the panel (Judges Linn, Dyk, and Prost) seemed curious about the applicability of In re Zurko in light of the Supreme Court’s KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) decision:  [Listen].

Yesterday, a panel of the court in In re Ravi Vaidyanathan, 2009-1404 (Fed. Cir. 2010) re-emphasized the principles of In re Zurko.  Judge Newman writing for herself and Chief Judge Michel wrote:

We agree with the Solicitor that an explicit statement of the level of ordinary skill is not always necessary in evaluating the obviousness of a new technologic advance. But whether or not stated explicitly, the perspective of a person of ordinary skill must frame the obviousness inquiry, and assertions of what such a person of ordinary skill would have found to be obvious require sufficient explanation to permit meaningful appellate review. In this case, not only the Board but also the examiner announced their conclusions of obviousness without providing any evidentiary support or reasoning for why a person of ordinary skill in the field of the invention would have deemed it obvious to select and combine various steps from different references, in the manner of the applicant. This court explained in In re Zurko, 258 F.3d 1379 (Fed. Cir. 2001), that the entry of the PTO into the deferential review of the Administrative Procedure Act requires the agency to provide support for its findings:

 

With respect to core factual findings in a determination of patentability, . . . the Board cannot simply reach conclusions based on its own understanding or experience—or on its assessment of what would be basic knowledge or common sense. Rather, the Board must point to some concrete evidence in the record in support of these findings. To hold otherwise would render the process of appellate review for substantial evidence on the record a meaningless exercise.

Id. at 1386.

 

The PTO Solicitor argues that the Court in KSR held that a combination of elements from different prior art references is likely to be unpatentable if it would involve nothing more than “the predictable use of prior art elements according to their established functions,” KSR, 550 U.S. at 417, and that the Board applied this reasoning to the combination of Biggers and Johnson. KSR also clarified that recourse to “common sense,” viewed through the perspective of a person of ordinary skill, is not barred in the obviousness inquiry. As the applicant states, while KSR relaxed some of the formalism of earlier decisions requiring a “teaching, suggestion, or motivation” to combine prior art references, it did not remove the need to anchor the analysis in explanation of how a person of ordinary skill would select and apply the teachings of the references. See, e.g., id. at 417 (“If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).

 

The applicant complains that the Board simply reasoned from the hindsight knowledge of his successful invention; he stresses that, unlike the facts in KSR, the various steps that he combined were not known to be combinable, and the result of increased precision in missile guidance to the target was not previously known or predictable.

 

Obviousness is determined as a matter of foresight, not hindsight. See id. at 421 (citing Graham, 383 U.S. at 36). KSR did not free the PTO’s examination process from explaining its reasoning. In making an obviousness rejection, the examiner should not rely on conclusory statements that a particular feature of the invention would have been obvious or was well known. Instead, the examiner should elaborate, discussing the evidence or reasoning that leads the examiner to such a conclusion. Generally, the examiner cites prior art references to demonstrate the state of knowledge. See 37 C.F.R. §1.104(c)(2) (“In rejecting claims for want of novelty or obviousness, the examiner must cite the best references at his or her command.”); Manual of Patent Examining Procedure (MPEP) §706.02 (8th ed., rev. July 2008) (“Prior art rejections should ordinarily be confined strictly to the best available art. [citing exceptions] Such rejec-tions should be backed up by the best other art rejections available.”). If it is not possible for the examiner to provide this type of information, the examiner might choose instead to provide an affidavit detailing the examiner’s own personal knowledge (as a person approximating one of ordinary skill in the art) of the technology in question. See 37 C.F.R. §1.104(d)(2) (“When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons.”). Where, as here, prior art references are cited to support an obviousness rejection, the references themselves need not in every case provide a “specific hint or suggestion” of the alteration needed to arrive at the claimed invention; the examiner’s analysis “may include recourse to logic, judgment, and common sense available to a person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). In these cases the examiner should at least explain the logic or common sense that leads the examiner to believe the claim would have been obvious. Anything less than this results in a record that is insulated from meaningful appellate review. Zurko, 258 F.3d at 1386. If the examiner is able to render a claim obvious simply by saying it is so, neither the Board nor this court is capable of reviewing that determination. See KSR, 550 U.S. at 418, citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).

It is interesting to note that Judge Dyk, who seemed somewhat concerned about the viability of In re Zurko after KSR during the oral argument of Perfect Web, merely concurred in the judgment of the panel in In re Vaidyanathan rather than joining in the opinion.  I wonder if that signals that  there is more to come in regard to the viability of In re Zurko. 

My two cents: In re Zurko is the public’s best defense against  the arbitrary use of a “common sense” analysis under KSR.

You can read the court’s decision in In re Vaidyanathan here:  [Read].

You can read the court’s decision in Perfect Web Technologies, Inc. v. InfoUSA, Inc. here: [Read].

You can read the court’s decision in In re Zurko here: [Read].

Electronic check processing is a quickly developing field that is becoming the subject of an increasing number of patent applications.  The non-obviousness of one such application (assigned to a government charter organization, the Federal Reserve Bank of Dallas) was the subject of oral argument recently in In re Schreck, 2009-1569 (Fed. Cir. April 12, 2010).

Judge Gajarsa focused on the PTO’s assertion of “common sense” during the oral argument.  Judge Gajarsa has made similar inquiries in other cases, as well.  For example, Judge Gajarsa inquired of the PTO how do we step over the line between ”common sense” and “hindsight.”  

Judge Gajarsa also pressed the PTO to admit that in many instances the PTO uses the applicant’s disclosure as a road map to pick and choose references to reject a claim and then relies on “common sense” as the justification for the rejection. [Listen]

Judge Plager also chimed in by commenting to appellant’s counsel “Don’t you think it’s nice that this court [the Federal Circuit] is now understood to have ”common sense” as well as familiarity with the law?” [Listen].

You can listen to the entire oral argument here: [Listen].

You can see the Rule 36 opinion here: [Read].

The recent case of In re Thorpe, 2010-1021 (Fed. Cir. March 8, 2010) concerned the issue of whether the cited references in a 103 rejection were non-analogous art.  Judge Gajarsa took the opportunity at oral argument to ask the associate solicitor arguing on behalf of the PTO how broad an examiner’s search field may be.  May the examiner search under any tree and under any rock or are there limits?   Judge Gajarsa also asked whether the search field is limited to the art that one of ordinary skill in the art would deem appropriate to search.  The PTO agreed that the art that one of ordinary skill in the art would look to would limit the field of search in an obviousness determination. [Listen].

You can listen to the entire oral argument here: [Listen].

The issue of “common sense” came up again in the oral arguments before the Federal Circuit.  In Siemens AG v. Seagate Technology, 2009-1382 (Fed. Cir. March 9, 2010), the panel questioned appellant’s counsel about “common sense” in regard to a highly technical field of art.  The question was whether “common sense” in a KSR analysis of a highly technical area refers to the “common sense” of an ordinary individual or the “common sense” of one of ordinary skill in the highly technical field of art at issue. [Listen]

In the opinion written by Judge Archer, the panel avoided the “common sense” issue and referred  instead to “common knowledge”:   

The jury implicitly found that all asserted claims of the ‘838 patent were rendered obvious by known giant magnetoresistive (”GMR”) sensors combined with a coupling layer and magnetic layer from known artificial antiferromagnets (”AAF”). Siemens asserts that there was no motivation to make this combination. However, Seagate’s expert, Dr. Wang, testified that AAF structures with a coupling layer and a magnetic layer were known to those of ordinary skill in the art in 1992 and were also found in prior art patents and publications. Dr. Wang further explained in detail that based on this common knowledge of AAFs and known problems with prior art GMR sensors (such as stray magnetic flux) and the design incentives for solving such problems, a person of ordinary skill in the art would have been motivated to solve these problems using an AAF. In light of Dr. Wang’s testimony, a reasonable jury could have found that it would have been obvious to one of ordinary skill in the art to combine known GMR sensors with the coupling and magnetic layers from known AAFs to make the claimed invention.

 Black’s Law Dictionary defines both “common knowledge” and “common sense”:

Common Knowledge.  Refers to what court may declare applicable to action without necessity of proof.  It is knowledge that every intelligent person has, and includes matter of learning, experience, history and facts of which judicial notice may be taken.  Shelley v. Chilton’s Adm’r, 236 Ky. 221, 32 S.W.2d 974, 977.  See also Judicial notice.

Common Sense.  Sound practical judgment; that degree of intelligence and reason, as exercised upon the relations of persons and things and the ordinary affairs of life, which is possessed by the generality of mankind, and which would suffice to direct the conduct and actions of the individual in a manner to agree with the behavior of ordinary persons.

You can listen to the entire oral argument here: [Listen].

You can read the court’s opinion here: [Read].

The Federal Circuit recently decided In re Medicis Pharmaceutical Corp., 2009-1291, (Fed. Cir. December 14, 2009), an appeal from the Board of Patent Appeals and Interferences.  An interesting issue that arose during oral argument was how many references may the PTO reasonably combine in making a 103 rejection.

Many patent attorneys have been frustrated at one time or another by an examiner seemingly hell-bent on rejecting a claim by combining an endless number of references so that all the elements of the claim could be accounted for in a 103 rejection.  Therefore, it was interesting to hear this exchange between Judge Rader and the Associate Solicitor for the PTO during the oral argument of In re Medicis Pharmaceutical Corp. as to how many references are too many: [Listen].  Judge Rader commented that when you start combining three references together rather than two, that suggests the person of ordinary skill has to have an awful lot of understanding.

Those who have researched this issue in the past are probably familiar with the MPEP section 2145, V. which states:

Reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991) (Court affirmed a rejection of a detailed claim to a candy sucker shaped like a thumb on a stick based on thirteen prior art references.).

In light of the Supreme Court’s decision in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007),  perhaps it would be clarifying for the Federal Circuit to consider Judge Rader’s position in a forthcoming opinion.

 At another point during the oral argument, Judge Rader commented about long-felt need.  The patent (which was on appeal from the Board after a reexamination) concerned a facial cleansing product.  And, Judge Rader noted that since the need for a good facial cleansing product has probably been in existence since the origin of mankind, that shouldn’t that be a significant factor to consider in the obviousness analysis: [Listen].

The panel issued a Rule 36 affirmance of the Board decision.

The panel in Source Search Technologies, LLC v. LendingTree, LLC weighed in on the common sense issue during oral argument.  You can listen to Judge Plager’s remarks and Judge Rader’s tongue in cheek remarks here: [Listen].

The invention at issue in this case was invented in the 1995-96 timeframe.  At one point during the oral argument Judge Rader made the interesting inquiry of appellee’s counsel that given the nascent stage of the internet in 1995-96,  what would have been the motivation or market force to combine brick and mortar references to achieve the claimed invention. [Listen].

 Judge Plager had the following follow-up comment for appellee’s counsel [Listen] to which Judge Rader responded.

Query:  People often note the speed with which the internet has evolved.  Should that change the calculus in the consideration of “long-felt need” under the Graham factors?  If it takes less time for innovation to occur in the art of computers and the internet as opposed to the art of plows and combines, wouldn’t it be appropriate for long-felt need to be assessed relative to the speed with which an industry evolves?

You can read the court’s opinion here: [Read].

You can listen to the entire oral argument here: [Listen].

There are a variety of views on what constitutes common sense.  Here are a few notable quotations:

“Le sens commun n’est pas si commun.” –Voltaire

“Common sense is very uncommon.” — Horace Greeley

“Common sense ain’t so common.” — Will Rogers

“Common sense is the collection of prejudices acquired by age eighteen.” - Albert Einstein

“Common sense is what tells us the Earth is flat and the Sun goes around it.” — Anonymous

“The philosophy of one century is the common sense of the next.” - Henry Ward Beecher

“Science is nothing, but trained and organized common sense.” - Thomas H. Huxley

“Common sense is genius dressed in its working clothes.” - Ralph Waldo Emerson

“Common sense is the genius of humanity.” - Johann Wolfgang Von Goethe

“The last time anybody made a list of the top hundred character attributes of New Yorkers, common sense snuck in at number 79.” - Douglas Adams

“Common sense is only a modification of talent. Genius is an exaltation of it. The difference is, therefore, in degree, not nature.” — Edward G. Bulwer-Lytton

“Common sense –Sound practical judgment; that degree of intelligence and reason, as exercised upon the relations of persons and things and the ordinary affairs of life, which is possessed by the generality of mankind, and which would suffice to direct the conduct and actions of the individual in a manner to agree with the behavior of ordinary persons.” — Black’s Law Dictionary

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You can read the court’s opinion here: [Read].

You can download the entire oral argument here: [Listen/Download].

The Federal Circuit has recently been issuing Rule 36 opinions with prodigious fecundity.¹  However, there is still plenty of intriguing commentary in the oral arguments underlying these terse judgments.

One interesting exchange occurred recently between Judge Moore and the associate solicitor for the PTO in the In re Rackman appeal.  Judge Moore was exploring when it is acceptable for the PTO to assert that it is obvious to modify a device in a prior art reference by adding software to it if the rationale that the PTO gives is simply to increase the functionality of the device.  [Listen]  Judge Moore seemed concerned about the effect that this could have on the patentability of future software inventions.

You can listen to the entire oral argument here: [Listen].

You can read the court’s opinion, such as it is, here: [Read].

¹ I’m not really well-read enough to use phrases like “prodigious fecundity;” but, I read the following Learned Hand quote today and couldn’t resist:  “[A]s the law stands, the inventor must accept the position of a mythically omniscient worker in his chosen field. As the arts proliferate with prodigious fecundity, his lot is an increasingly hard one.” Merit Mfg. Co. v. Hero Mfg. Co., 185 F.2d 350, 352 (2d Cir. 1950).  Which begs the question, “How would Learned Hand have decided Bilski v. Kappos?”