The Software IP Report

A Federal Circuit Reminder on the Limits of Obviousness

The circumstances are few in which “common sense” can substitute for a claim limitation missing from the prior art in an obviousness rejection under 35 U.S.C. § 103, the Federal Circuit explained in Arendi S.A.R.L. v. Apple, Inc., No. 2015-2073 (Fed. Cir. Aug. 10, 2016) (opinion by Judge O’Malley, joined by Judges Linn and Moore).  In an Inter Partes Review proceeding, the USPTO’s Patent Trial and Appeal Board had found that claims of U.S. Patent No. 7,917,843 were unpatentable as obvious over prior art under Section 103.  The Federal Circuit reversed “[b]ecause the Board misapplied [the] law on the permissible use of common sense in an obviousness analysis.”

Claim 1 of the ’843 patent, agreed to be representative, recites a “method for finding data related to the contents of a document using a first computer program running on a computer.”  The PTAB found the ’843 patent claims obvious over a single reference, U.S. Patent No. 5,859,636 to Pandit.  Pandit “teaches recognizing different classes of text in a document and providing suggestions based on it.”

The Appellants argued that Pandit failed to render obvious the limitation from claim 1 shown in italics below:

providing an input device, configured by the first computer program, that allows a user to enter a user command to initiate an operation, the operation comprising (i) performing a search using at least part of the first information as a search term in order to find the second information, of a specific type or types, associated with the search term in an information source external to the document, wherein the specific type or types of second information is dependent at least in part on the type or types of the first information, and (ii) performing an action using at least part of the second information.

The PTAB found claim 1 obvious over Pandit by finding

it reasonable to presume, as a matter of common sense and at the time of the invention, that the subroutine in Pandit would search for duplicate telephone numbers and, upon locating a duplicate entry, both the first information and associated (or second) information, such as the name and/or address associated with the telephone number, would be displayed to the user.

Even though a human being entering a contact into an address book would not have searched for duplicate entries prior to making the entry, the PTAB thought that when entering a number in an electronic address book, a search for duplicate entries would have been an obvious step.  According to the PTAB, considering “common knowledge and common sense” was not only permitted, but required, in an obviousness analysis.

The Federal Circuit agreed “that common sense and common knowledge have their proper place in the obviousness inquiry.”  However, “there are at least three caveats to note in applying “common sense” in an obviousness analysis.”

The first caveat in the use of common sense in Section 103 rejections is that “common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation.” (Emphasis in original.)

Secondly, in the one case “in which common sense was invoked to supply a limitation that was admittedly missing from the prior art, the limitation in question was unusually simple and the technology particularly straightforward.”  In that case, the missing claim limitation was simply to repeat steps found in the prior art, not a technical limitation.  Those facts were “distinguishable from the case at bar and ought to be treated as the exception, rather than the rule.”

Thirdly, the Federal Circuit’s “cases repeatedly warn that 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 case taught “that while ‘common sense’ can be invoked, even potentially to supply a limitation missing from the prior art, it must still be supported by evidence and a reasoned explanation.”

The Appellees successfully showed that methods for searching databases with large volumes of data were known in the prior art.  However, the Appellees

failed to show why it is proper to extrapolate from this general background knowledge of searches in a database to add a search for a telephone number to the Pandit reference. Specifically, Appellees have failed to show why it would be common sense for the “Add to address book” function to operate by first “search[ing] for entries with the same telephone number.”

Therefore, the court concluded, the PTAB improperly relied on “conclusory statements and unspecific expert testimony regarding searches in general” in coming to “its conclusion that it would have been ‘common sense’ to search a database for a telephone number to be added.” The PTAB “ignored . . . the differences between searching for duplicate entries with a telephone number versus with a name or address.” Its “errors were particularly problematic considering the fact that a key limitation of the ‘843 patent was missing from the prior art reference in dispute.”  Further, “this is not a case where a more reasoned explanation than that provided by the Board can be gleaned from the record.”  To the contrary, “application of common sense to the evidence of record would lead to a conclusion that the petitioner failed to meet its burden of establishing unpatentability of the ‘843 patent on obviousness grounds.”

Although this case was an appeal from a determination in an IPR proceeding, it provides good ammunition for responding to – and appealing from – rejections in Office Actions in ex parte prosecution.  Patent examiners love to gloss over an admitted omission in the prior art by saying, things like “oh, well, it would have been common sense to bend the widget to the left.”  This case is an important reminder that, with rare exceptions, the party stating an obviousness rejection (e.g., an examiner) has the burden to show that the prior art reference(s) teach every claim limitation.  This requirement is prior to and apart from the requirement to state a reason or motivation to have combined references.