August 11, 2016

PTAB Misapplied Common Sense in Finding Claims Obvious

By Bryan K. Wheelock, Principal

In Arendi S.A.R.L. v. Apple Inc., [2015-2073] (August 10, 2016) the Federal Circuit reversed the PTAB Final Written Decision that claims 1-2, 8, 14-17, 20-21, 23-24, 30, 36-39, and 42-43 of U.S. Patent No. 7,917,843 were obvious, finding that the PTAB misapplied common sense.

Petitioner argued, and the PATB agreed, that in order to avoid multiple entries of the same address, it would have been obvious that the first step in adding to an address book is to search the address book to determine if an entry already exists, and displaying any associated information that is located. Although the PTAB recognized that “a human being entering a contact into a paper address book would not be expected to search for duplicate telephone number entries,” the PTAB nevertheless, found that “it would have been obvious to the ordinary artisan to utilize a computerized search for duplicate telephone entries when entering a telephone number in an electronic address book.

The single question at issue was whether the Board misused “common sense” to conclude that it would have been obvious to supply a missing limitation in the prior art to arrive at the claimed invention.  The Federal Circuit said that common sense and common knowledge have their proper place in the obviousness inquiry, at least if explained with sufficient reasoning.

In view of the Supreme Court’s instruction in KSR, consider common sense, common wisdom, and common knowledge are considered in analyzing obviousness.  But the Federal Circuit noted three caveats: First, common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation.  Second, where common sense is invoked to supply a limitation that was admittedly missing from the prior art, the limitation in question must be unusually simple and the technology particularly straightforward.  Third, the use of “common sense” — whether to supply a motivation to combine or a missing limitation — cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified.

The Federal Circuit said that based on its precedent, while “common sense” can be invoked, even potentially to supply a limitation missing from the prior art, it must still be supported by evidence and a reasoned explanation. In cases in which “common sense” is used to supply a missing limitation, as distinct from a motivation to combine, moreover, our search for a reasoned basis for resort to common sense must be searching.

Because the PTAB’s presumption that adding a search for phone numbers would be “common sense” was conclusory and unsupported by substantial evidence, the missing limitation is not a “peripheral” one, and there is nothing in the record to support the PTAB’s conclusion that supplying the missing limitation would be obvious to one of skill in the art, the Federal Circuit reversed the Board’s
finding of unpatentability.