{"id":1102,"date":"2016-08-11T18:12:02","date_gmt":"2016-08-11T22:12:02","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1102"},"modified":"2016-08-12T21:42:31","modified_gmt":"2016-08-13T01:42:31","slug":"ptab-misapplied-common-sense-in-finding-claims-obvious","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1102","title":{"rendered":"PTAB Misapplied Common Sense in Finding Claims Obvious"},"content":{"rendered":"

In Arendi S.A.R.L. v. Apple Inc.<\/em>, [2015-2073] (August 10, 2016) the Federal Circuit reversed the PTAB Final Written Decision that claims\u00a01-2, 8, 14-17, 20-21, 23-24, 30, 36-39, and 42-43 of U.S. Patent No.\u00a07,917,843 were obvious, finding that the PTAB misapplied common sense.<\/p>\n

Petitioner argued, and the PATB agreed, that in order to avoid multiple entries\u00a0of the same address, it\u00a0would have been obvious that the first step in\u00a0adding to an address book is to search the address\u00a0book to determine if an entry already exists, and displaying any associated\u00a0information that is located. Although the PTAB recognized that \u201ca human\u00a0being entering a contact into a paper address book would\u00a0not be expected to search for duplicate telephone number\u00a0entries,\u201d the PTAB nevertheless, found that \u201cit would have been\u00a0obvious to the ordinary artisan to utilize a computerized\u00a0search for duplicate telephone entries when entering a telephone number in an electronic address book.<\/p>\n

The single question at issue was\u00a0whether the\u00a0Board misused \u201ccommon sense\u201d to conclude that it would\u00a0have been obvious to supply a missing limitation in the
\nprior art to arrive at the claimed invention. \u00a0The Federal Circuit said that\u00a0common sense and common\u00a0knowledge have their proper place in the obviousness
\ninquiry, at least\u00a0if explained with sufficient reasoning.<\/p>\n

In view of the Supreme Court’s instruction in KSR,\u00a0consider common sense, common wisdom, and common\u00a0knowledge are considered in analyzing obviousness. But the Federal Circuit noted three caveats: First, common sense is typically invoked to provide a known\u00a0motivation to combine, not to supply a missing claim\u00a0limitation. \u00a0Second, where\u00a0common sense is invoked to supply a
\nlimitation that was admittedly missing from the prior art,\u00a0the limitation in question must be unusually simple and the\u00a0technology particularly straightforward. \u00a0Third, the use of\u00a0\u201ccommon sense\u201d\u2014whether to supply a motivation to\u00a0combine or a missing limitation\u2014cannot be used as a\u00a0wholesale substitute for reasoned analysis and evidentiary\u00a0support, especially when dealing with a limitation
\nmissing from the prior art references specified.<\/p>\n

The Federal Circuit said that based\u00a0on its precedent, while \u201ccommon
\nsense\u201d can be invoked, even potentially to supply a limitation\u00a0missing from the prior art, it must still be supported\u00a0by evidence and a reasoned explanation. In cases in\u00a0which \u201ccommon sense\u201d is used to supply a missing limitation,\u00a0as distinct from a motivation to combine, moreover,\u00a0our search for a reasoned basis for resort to common sense\u00a0must be searching.<\/p>\n

Because the PTAB’s presumption that adding a\u00a0search for phone numbers would be \u201ccommon\u00a0sense\u201d was conclusory and unsupported by substantial\u00a0evidence, the missing limitation is not a \u201cperipheral\u201d one,\u00a0and there is nothing in the record to support the PTABs\u00a0conclusion that supplying the missing limitation would be\u00a0obvious to one of skill in the art, the Federal Circuit reversed the Board\u2019s
\nfinding of unpatentability.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Arendi S.A.R.L. v. Apple Inc., [2015-2073] (August 10, 2016) the Federal Circuit reversed the PTAB Final Written Decision that claims\u00a01-2, 8, 14-17, 20-21, 23-24, 30, 36-39, and 42-43 of U.S. Patent No.\u00a07,917,843 were obvious, finding that the PTAB misapplied … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[12],"tags":[],"class_list":["post-1102","post","type-post","status-publish","format-standard","hentry","category-obviousness"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1102","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1102"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1102\/revisions"}],"predecessor-version":[{"id":1103,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1102\/revisions\/1103"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1102"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1102"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1102"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}