In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 , 416 , 127 S. Ct. 1727 , 167 L. Ed. 2d 705 (2007), the Supreme Court cemented the role of common sense in the obviousness inquiry, noting that “[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.” The Supreme Court instructed that “[c]ommon sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Thus the Supreme Court said that:

When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.

550 U.S. at 421; 127 S.Ct. at 1742; 167 L.Ed.2d at 723-4.

After KSR, the Federal Circuit has affirmed the application of common sense in a number of cases. In B/E Aerospace, Inc. v. C&D Zodiac, Inc, 962 F.3d 1373, 1379-80, 2020 U.S.P.Q.2d 10706 (Fed.Cir. 2020), the Federal Circuit affirmed the PTAB’s determination of obviousness of U.S. Patent Nos. 9,073 ,641 and 9,440,742 relating to space-saving technologies for aircraft enclosures such as lavatory enclosures, agreeing with the PTAB that it would have been a matter common sense to modify the prior art. In Perfect Web Techs., Inc. v. Infousa, Inc., 587 F.3d 1324, 92 U.S.P.Q.2d 1849, (Fed. Cir. 2009), the Federal Circuit affirmed summary judgment of invalidity of U.S. Patent No. 6,631,400 directed to managing bulk e-mail distribution to groups of targeted consumers, affirming the district court application of common sense and noting that common sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning. In Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 2020 U.S.P.Q.2d 32509 (Fed.Cir. 2020), the Federal Circuit affirmed a PTAB decision that relied on common sense to supply a missing claim element, where corroborated expert testimony established that that element was not only in the prior art, but also within the general knowledge of a skilled artisan.

Of course, what is important to prosecutors is combatting the misapplication of common sense in the obviousness inquiry. That is what happened in Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 119 U.S.P.Q.2d 1822 (Fed. Cir. 2016) where the Federal Circuit reversed the PTAB determination that challenged claims of U.S. Patent No. 7,917,843 were obvious, because the Board misapplied the law on the permissible use of common sense in an obviousness analysis. The Federal Circuit identified 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. Second, as in Perfect Web, when common sense is invoked to supply a limitation that was admittedly missing from the prior art, the limitation in question must be unusually simple and the technology particularly straightforward. Third, 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.  The Federal Circuit said that the Board relied upon conclusory statements and unspecific expert testimony in drawing its conclusion that the invention would have been “common sense.” Because the application of “common sense” was conclusory and unsupported by substantial evidence, the missing limitation was not a “peripheral” one, and there was 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, the Federal Circuit reversed the Board’s finding of unpatentability.

In DSS Tech. Mgmt., Inc. v. Apple Inc., 885 F.3d 1367, 126 U.S.P.Q.2d 1084 (Fed. Cir.2018), the Federal Circuit reversed the PTAB’s determination that the challenged claims of U.S. Patent No. 6,218,290 were invalid for obviousness, because the Board did not provide a sufficient explanation for its conclusions, and because it could not glean any such explanation from the record.

The PTAB invoked the “ordinary creativity” which the Federal Circuit said was no different from the reference to “common sense” that it considered in Arendi. The Board relied on a gap-filler—”ordinary creativity” instead of “common sense”—to supply a missing claim limitation. The Federal Circuit said that in cases in which “common sense” is used to supply a missing limitation, as distinct from a motivation to combine, the search for a reasoned basis for resort to common sense must be searching. The Federal Circuit said that the Board’s reliance on “ordinary creativity” calls for the same “searching” inquiry. The Federal Circuit found that the Board’s decision did not satisfy the standard set forth in Arendi. The full extent of the Board’s analysis is contained in a single paragraph. In reaching its conclusion that the missing element would have been obviousness, the Board made no citation to the record, referring instead to the “ordinary creativity” of the skilled artisan. This was not enough to satisfy the Arendi standard.

In re Van Os, 844 F.3d 1359, 121 U.S.P.Q.2d 1209 (Fed. Cir. 2017), the Federal Circuit vacated and remanded the PTAB affirmance of the Examiner’s rejection of Van Os’ claims. The Federal Circuit said that it has repeatedly explained that obviousness findings grounded in “common sense” must contain explicit and clear reasoning providing some rational underpinning why common sense compels a finding of obviousness. ” The Federal Circuit said that “[a]bsent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious.'” The Federal Circuit concluded that “Such a conclusory assertion with no explanation is inadequate to support a finding that there would have been a motivation to combine. This type of finding, without more, tracks the ex post reasoning KSR warned of and fails to identify any actual reason why a skilled artisan would have combined the elements in the manner claimed.”

When faced with an obviousness rejection based upon “common sense” or “ordinary creativity” or “intuition,” it is important to note that these are not a substitute for reasoned analysis and evidentiary support. This is especially true when dealing with a limitation missing from the prior art references specified. Demand this reasoned analysis where it is lacking.