Patentablity – KSR v Teleflex Revisited

The Federal Circuit Court of Appeals has taken the opportunity to remind the Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board), as well as the district courts, that they are to give a holistic, rather than narrowly-focused view of the prior art when evaluating patentablity. In Randall Mfg. v. Rea (2012-1611 — 10/30/2013), Judge Taranto reminds us of the need to review prior-art references according to the “knowledge, creativity and common sense” that the person of ordinary skill would have brought to bear on the problem that the inventor claims to have solved, citing the Supreme Court’s KSR Int’l v Teleflex decision from 2007. That is a combination would not be patentable if it does not amount to more than the combination of familiar, known elements according to known methods, each performing the same function it had been known to perform, and leading to the same results.
But how does anyone know what sort of “common sense” is possessed by persons working in the field or art relevant to the claimed invention?
I would counsel that the Courts or the Board should use caution when attempting to determine the role of “common sense” in a patentability analysis. The term “common sense” by anyone’s definition is a subjective mental process, incapable of explanation, and not conducive to administrative or judicial review. Neither the USPTO nor the Court should have to rely on “common sense” when less problematic terms, like “obvious” and “predictable”, are better suited to a patentability analysis.