All patent practitioners recognize that a single prior art reference can be used to reject claims in an obviousness rejection. However, the issue is whether the Patent Office must provide additional evidence, above and beyond the sole prior art reference, when using common sense to conclude the invention is obvious. Recently, the Federal Circuit held that the Board misapplied the law on the permissible use of common sense in an obviousness analysis. Arendi S.A.R.L. v. Apple Inc., No. 2015-2073, 2016BL258032, 5 (Fed. Cir. Aug. 10, 2016).

The Arendi case began as an IPR petition filed December 2, 2013 by Apple Inc., Google, Inc., and Motorola Mobility LLC claiming U.S. Patent No. 7,917,843 (the ‘843 Patent), owned by Arendi S.A.R.L., was invalid as obvious. The IPR was instituted and the Board issued an opinion on June 9, 2015 finding the claims unpatentable as obvious. On appeal, the Federal Circuit reverses the Board.

As described by the patent owner, the “’843 Patent is directed, among other things, to computer-implemented processes for automating a user’s interaction between a first application, such as a word processing application or spreadsheet application, on the one hand, and a second application, such as contact management application having a database, on the other.” IPR2014-00208, Paper 6 page 1. The sole prior art reference used to invalidate the ‘843 Patent as obvious was U.S. Patent No. 5,859,636 (“Pandit”). Pandit taught recognizing different classes of text in a document and providing suggestions based on it.

The Federal Circuit acknowledged that there is a place for common sense, common wisdom, and common knowledge in the obviousness analysis. However, Judge O’Malley provides three caveats when applying common sense in these instances.

First, common sense is acceptable to use to provide a motivation to combine, not to supply a missing claim limitation. O’Malley noted the suggestion test described in Dystar. The suggestion test does not require that an explicit teaching to combine be found in a particular prior art reference, the motivation to combine “may be found in the knowledge of one of ordinary skill in the art, or, in some cases, from the nature of the problem to be solved. When not from the prior art references, the ‘evidence’ of motive will likely consist of an explanation of the well-known principle or problem-solving strategy to be applied.”. Dystar Textilfarben GmbH v. Patrick Co., 464 F.3d 1356, 1366 (Fed. Cir. 2006).  The Dystar decision further explained that an “implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient…In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references.” Id. at 1368.

Secondly, Judge O’Malley noted that a claim limitation missing from the prior art may be supplied using common sense but only if the limitation is “unusually simple and the technology particularly straightforward.” Arendi at 5. He cited the Perfect Web decision, which held “that while an analysis of obviousness always depends on evidence that supports the Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed.Cir. 2009). According to O’Malley, the Perfect Web case was unique in that common sense was used to render the required step which merely involved repeating the earlier steps as obvious. The Arendi panel decision makes it clear that this use of common sense must be treated as an exception, rather than the rule.

Lastly, “references to ‘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 at 6. Judge O’Malley noted three prior Federal Circuit decisions to parse out this caveat: In re Lee, In re Zurko, and Hear-Wear.  In In re Lee, neither the Examiner nor the Board adequately supported the selection or combination of references. The In re Lee decision explained that the “factual question of motivation is material to patentability and could not be resolved on subjective belief and unknown authority. It is improper, in determining whether a person of ordinary skill would have been led to this combination of references, simply to use that which the inventor taught against its teacher.” In re Lee, 277 F.3d 1338, 1344 (Fed. Cir. 2002). In In re Zurko, a Federal Circuit panel further explained that the expertise in the subject matter at issue of the Examiner and the Board “may provide sufficient support for conclusions as to peripheral issues with respect to core factual findings in a determination of patentability, however, the [Examiner or] Board cannot simply reach conclusions based in its own understanding or experience- or on its assessment of what would be basic knowledge or common sense. Rather, the [Examiner or ] Board must point to some concrete evidence in the record in support of these findings.” In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001). Additionally, in the Hear-Wear case, the Federal Circuit found that the patent Examiner may rely on common knowledge in narrow circumstances, but it is not “appropriate for the Examiner to take official notice of facts without citing a prior art reference where the facts asserted to be well known are not capable of instant and unquestionable demonstration as being well-known.” K/S HIMPP v. Hear-Wear Techs, LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014), citing MPEP § 2144.03. Ultimately, it comes down to whether the common knowledge, without evidence in the record, is being used to support an important structural limitation that is not evidently and indisputable within the common knowledge of those skilled in the art. Id. at 1365-66.

In the Arendi decision, the Federal Circuit panel found the case before it as analogous to Hear-Wear and not Perfect Web, stating “this is not a case about ‘peripheral’ limitations or about the Board substituting documentary evidence of a motivation to combine with its expertise about common motivations in the at field of technology. Instead, it is about whether the Board accepted a conclusory assertion from a third party about general knowledge in the art without evidence on the record, particularly where it is an important limitation that is not evidently and indisputably within the common knowledge of those skilled in the art.” Arendi at 7-8. The Federal Circuit panel ultimately reverses the Board’s finding of unpatentability for three reasons: 1) the Board’s use of common sense was conclusory and unsupported by substantial evidence; 2) the missing limitation is not peripheral; and 3) there is nothing in the record to support the Board’s conclusion that supplying the missing limitation would be obvious to one skilled in the art. Arendi at 11.

The Arendi decision should serve as a reminder that one of the patent practitioner’s responsibilities during prosecution is to ensure that the rejections made by an Examiner are supported by evidence of record and, when no such support is provided, to insist that appropriate evidence be supplied.