On August 9, 2016, the Federal Circuit Court of Appeals issued its opinion in Arendi S.A.R.L. v. Apple Inc., Appeal No. 15-2073 (Fed. Cir. 2016). In the case, the Federal Circuit holds: “Because the Board’s presumption that adding a search for phone numbers to Pandit 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 Board’s conclusion that supplying the missing limitation would be obvious to one of skill in the art, we reverse the Board’s finding of unpatentability.”
The Federal Circuit provided the following analysis:
“The single question at issue here is whether the Board misused “common sense” to conclude that it would have been obvious to supply a missing limitation in the Pandit prior art reference to arrive at the claimed invention. It is true that common sense and common knowledge have their proper place in the obviousness inquiry. We stated in Perfect Web that “[c]ommon sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning.” 587 F. 3d at 1328. And we stated in Randall that “[i]n KSR, the Supreme Court criticized a rigid approach to determining obviousness based on the disclosures of individual prior art references, with little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (citing KSR, 550 U.S. at 415-22); see also DyStar, 464 F.3d at 1367. Hence, we do consider common sense, common wisdom, and common knowledge in analyzing obviousness.”
“But there are at least three caveats to note in applying “common sense” in an obviousness analysis. First, common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation. In DyStar, a pre-KSR case, we held a patent obvious where “all claim limitations [were] found in a number of prior art references,” 464 F.3d at 1360, and a person of ordinary skill in the art would have combined the references to achieve a “cheaper, faster, and more convenient” process. Id. at 1371 (quoting Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1355 (Fed. Cir. 2001)). We stated 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.” DyStar, 464 F.3d at 1368. Similarly, in Randall, we invoked common sense to vacate the Board’s determination of non-obviousness where “the Board failed to consider a wealth of well-documented knowledge that is highly material to evaluating the motivation to combine references.” Randall, 733 F.3d at 1356. There, the Board’s decision to ignore the existence of a “prevalent, perhaps even predominant method” of achieving the limitation at issue was prejudicial error. Id. at 1363. Second, in Perfect Web, the only case Appellees identifies (sic) in which common sense was invoked to supply a limitation that was admittedly missing from the prior art, the limitation in question was unusually simple and the technology particularly straightforward. “The patented invention involves comparing the number of successfully delivered e-mail messages in a delivery against a predetermined desired quantity, and if the delivery does not reach the desired quantity, repeating the process of selecting and e-mailing a group of customers until the desired number of delivered messages has been achieved.” Perfect Web, 587 F.3d at 1326. There, the missing claim limitation—step D of steps A-D—was nothing more than an instruction to repeat steps A, B, and C until a particular quantity of email was sent in accordance with the claim. By contrast, the missing search at issue here “plays a major role in the subject matter claimed” and “affects much more than step (i).” Appellant’s Br. 24. That is—if the search in step (i) is missing, then “the claims would be almost void of content” because the premise of the patent is to use information in a first program to find related information in a second program. Id. at 25. Thus, the facts in Perfect Web are distinguishable from the case at bar and ought to be treated as the exception, rather than the rule. Third, our cases repeatedly warn that 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. Indeed, we stated that although there is no problem with using common sense “without any specific hint or suggestion in a particular reference,” the Board’s “utter failure to explain the ‘common knowledge and common sense’ on which it relied” is problematic. DyStar, 464 F.3d at 1366 (explaining our reasoning in In re Lee, 277 F.3d 1338, 1341, 1344 (Fed. Cir. 2002)). See also In re Zurko, 258 F.3d 1379, 1383, 1385 (Fed. Cir. 2001) (reversing Board where it adopted examiner’s unsupported assertion that claim limitation missing from cited references was “basic knowledge” and it “would have been nothing more than good common sense” to combine the references).”
For attorneys who practice in this area, it’s good to note that the Federal Circuit is requiring the PTAB to be more specific in its analysis. It all sounds like common sense to me.