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“Common Sense” in Patent Obviousness

Fifteen years the Supreme Court in KSR v, Teleflex changed the straight-forward approach that the Court of Appeals for the Federal Circuit and the PTO had been taking, called TSM (for teaching-suggestion-motivation). ‘This fairly mechanical approach of interpreting and applying two or more prior art references, according to the Supreme Court, was too stringent, and the patent statute itself required a more comprehensive approach, and the court included some additional comments about this. One of those, given without any explanation or example of how it might be used or applied, was “common sense.”

That term, of course, appears nowhere in the patent statute, and so “common sense” reasoning as it might apply to a patentability analysis, is not much help without some further development, which was not quick in coming.

About ten years later, in Avendi S.A.R.L. v. Apple, Inc., the Federal Circuit Court of Appeals came up with a rough standard about when one might apply common sense reasoning to a challenged patent claim. That court ruled that although the KSR decision iterated that common sense common wisdom, and common knowledge can be important in a given obviousness analysis, “common sense” is invoked in an obviousness analysis (1) to provide a known motivation to combine references, but not to supply a missing claim limitation, or (2) to supply a missing claim limitation to the prior art ONLY when the limitation and the underlying technology are straightforward. This was followed in 2018 by the Federal Circuit in DSS Technology Management v. Apple, and given further analysis by at least two other Federal Circuit decisions. Knowledge of a problem and motivation to solve it are entirely different considerations from motivation to combine particular references (T Q Delta LLC v. Sysco Systems (2019); and [One] cannot rely on an unsupported assertion of common sense to fill a hole in the evidence formed by a limitation that is missing in the prior art. (B/E Aero v. C&D Zodiac (2020).

The Patent Office current guidelines concerning KSR and obviousness analyses, unchanged since 2010, states that it can be important for an examiner to identify a reason to combine prior art elements. Even though the components are known, the combining step is technically feasible, and the result is predictable, the claimed invention may be nonobvious when the combining step involves such additional effort that no one of ordinary skill would have undertaken it without a recognized reason to do so. This guidance then goes on “Common sense may be used to support a legal conclusion o obviousness so long as it is explained with sufficient reasoning”

That last statement is somewhat confusing insofar as “common sense” is a subjective mental process, incapable of explanation with any precision, and certainly not conducive to any sort of administrative review or judicial review. Common sense reasoning means the use of inexact reasoning methods that seem to characterize human thinking in which important decisions have to be made with incomplete knowledge and where great uncertainty has to be tolerated. Also, because “common sense” refers to a set of beliefs and propositions held by many people without resort to any specialized knowledge, common sense reasoning would have to include the body of knowledge held by others outside the community of persons of ordinary skill over a particular art or discipline.

All in all, the patent community, both examiners, courts, patent practitioners and inventors, should probably steer clear of “common sense””common knowledge” and stick with the more usual terms, “obvious” and ‘predictable”, which are not so problematic. Perhaps the Federal Circuit and/or the Supreme Court will eventually arrive at that conclusion.