Where do you draw the line between “common sense” and hindsight?

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].

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