{"id":1974,"date":"2018-03-23T22:17:32","date_gmt":"2018-03-24T02:17:32","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1974"},"modified":"2018-03-24T23:08:38","modified_gmt":"2018-03-25T03:08:38","slug":"ordinary-creativity-is-no-different-than-common-sense-and-requires-explanation","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1974","title":{"rendered":"“Ordinary Creativity” is no Different Than “Common Sense” and Requires Explanation"},"content":{"rendered":"

In DSS Technology Management, Inc. v. Apple Inc.<\/a>, [2016-2523, 2016-2524] (March 23, 2018), the Federal Circuit reversed the decision of the PTAB\u00a0finding claims 1\u20134 and 9\u201310 of U.S. Patent No.\u00a06,128,290 obvious, because the Board failed to\u00a0provide a sufficient explanation for its conclusions.<\/p>\n

The patent\u00a0is directed to a wireless communication network\u00a0for a single host device and multiple peripheral devices.\u00a0 The sole issue on the appeal was whether it was obvious to modify the single asserted reference.\u00a0 The Federal Circuit noted that common sense and common knowledge have their proper place in the obviousness inquiry, if it is explained with sufficient reasoning.\u00a0 However there are at least three caveats to the application of “common sense”: First, common sense is typically invoked to\u00a0provide a known motivation to combine, not to supply a\u00a0missing claim limitation.\u00a0\u00a0Second, common sense is invoked to fill in a\u00a0missing limitation only when \u201cthe limitation in question\u00a0was unusually simple and the technology particularly\u00a0straightforward.\u00a0 Third, reference\u00a0to “common sense” \u2014whether to supply a motivation\u00a0to combine 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 found that the Board’s invocation of “ordinary creativity” was no different from “common sense,” and requires a “searching” inquiry.\u00a0\u00a0The Federal Circuit noted that\u00a0the full extent of the Board\u2019s analysis was contained in a\u00a0single paragraph.\u00a0 In finding the claimed invention obvious, the\u00a0Board made no\u00a0citation to the record, and instead referred to the\u00a0\u201cordinary creativity\u201d of the skilled artisan.<\/p>\n

The Federal Circuit\u00a0said that to the extent the Board\u2019s obviousness findings were\u00a0based on expert testimony — which was questionable, since it was not cited. Dr. Hu\u2019s testimony\u2014which is questionable,\u00a0because the Board never cited her testimony directly\u2014 the\u00a0\u201cconclusory statements and unspecific expert testimony\u201d were insufficient to support the Board\u2019s findings.<\/p>\n

The Federal Circuit said that without\u00a0\u201ca reasoned explanation that avoids conclusory generalizations,\u201d the Board’s reasoning\u00a0was not sufficient.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In DSS Technology Management, Inc. v. Apple Inc., [2016-2523, 2016-2524] (March 23, 2018), the Federal Circuit reversed the decision of the PTAB\u00a0finding claims 1\u20134 and 9\u201310 of U.S. Patent No.\u00a06,128,290 obvious, because the Board failed to\u00a0provide a sufficient explanation for … 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-1974","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\/1974","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=1974"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1974\/revisions"}],"predecessor-version":[{"id":1975,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1974\/revisions\/1975"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1974"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1974"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1974"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}