This case involved an appeal of an inter parte review decision in which the Board invalidated certain claims of a patent, because it found that the missing limitation in the prior art of record could be supplied by common sense.  The Federal Circuit, however, found the Board’s presumption that adding the missing claim limitation would be “common sense” was conclusory and unsupported by substantial evidence, and consequently, it reversed the Board’s finding of obviousness.

The Federal Circuit emphasized that “common sense and common knowledge have their proper place in the obviousness inquiry,” but there are three caveats: First, “common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation.”  Second, on rare occasions where the missing limitation from the prior art is “unusually simple and technology particularly straightforward,” common sense could be invoked to supply the missing limitation.  Third, “‘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.” 

Arendi S.A.R.L. v. Apple Inc., Case No. 2015-2073 (August 10, 2016); Opinion by: O’Malley, joined by Moore and Linn; Appealed From: United States Patent and Trademark Office, Patent Trial and Appeal Board.  Read the full opinion here.

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