In Arendi v. Apple (Fed. Cir. August 10, 2016), the Federal Circuit held that the use of common sense during examination of a patent application is permitted with at least three caveats. To the layperson, this statement may sound strange. In the law, words are defined and have different standards to determine if the facts meet the definition. Obviousness has a legal definition and sometimes that legal definition may cause the examiner to mechanically focus on the legal definition to the detriment of stepping back and seeing the bigger picture. On the other hand, if the examiner liberally applies the definition then the results may be different from examiner to examiner. Some inventions worthy of patent protection will not receive a patent, and vice versa. Arendi stands for the proposition that the examination process allows the examiner to think outside of the narrow constraints of the legal definition but with caution.
Arendi (patent owner) was the owner of US Patent No. 7917843 (‘843 patent). The ‘843 patent was directed to a computer program wherein the user was allowed to access and conduct a search using a second computer program (i.e., database) while remaining in a first computer program (e.g., word processor). For example, if the user was filling out a form while working in the first computer program (e.g., word processor) and the first computer program detected a name, then a database (the second computer program) could be searched for the name. If the search found a single related contact with only one address, that address was inserted into the word processor. If instead, the search found more than one related contact addresses, the search results were displayed to the user, and the user was able to choose an address for insertion into the first computer program (i.e. word processor).
During examination, the examiner cited to a patent issued to Pandit (USPN5859636) to reject the claimed invention. The Pandit patent disclosed a computer program able to identify a class of text and provide options for the user to select. For example, if the computer program recognized a string of text as a phone number, then the computer program would provide the user with two or more options when the user opened a pulldown menu. The phone number pulldown menu listed options such as dial, add to address book and send fax. (see Figure 1f of Pandit). The examiner pointed to the “add to address book” option to show that the claimed invention was obvious.
The examiner rejected the claimed invention and reasoned that even though the Pandit patent did not disclose the step of searching a second computer program (e.g. database) while working within a first computer program (e.g. word processor), it would have been “common sense” to a person of ordinary skill in the art to search for the telephone number that is detected in a document when the “add to address book” option disclosed in Pandit was selected.
The “common sense” line of reasoning was first introduced in 2007 when the Supreme Court published KSR Int’l co. v. Teleflex Inc., 550 US 398 (2007). Prior to KSR, the obviousness analysis revolved around whether the prior art reference taught, suggested or motivated (TSM) one of ordinary skill in the art to combine the teachings of the references. This standard led to some strange results because the determination of whether a claimed invention was obvious was strictly a legal definition than something what a layperson would agree would be obvious.
For example, in KSR, the invention was directed to an electronically controlled brake system. Back in 2007, brakes were controlled by a wire connected to the brake pedal. The Supreme Court found that the claimed invention was obvious because brake systems were moving from a mechanical controlled system to an electronically controlled system. Even though the prior art did not disclose a brake system that was electronically controlled, the Supreme Court reasoned that based on the direction of the prior art, it would have been well within the “common sense” of one of ordinary skill in the art to make a brake system electronically controlled.
When KSR was decided, one of the issues for patent attorneys was whether the commonsense reasoning could be used to reject any claim as being a “common sense” combination of any prior art references. Patent attorneys worried that the “common sense” line of reasoning could be used to reject any and all claims. Fortunately, that was not the case. Arendi identified at least three caveats or limitations to further control use of “common sense” line of reasoning in analyzing whether a claimed invention is obvious.
First, the court stated that common sense is typically invoked to provide a known motivation to combine, not to supply missing claim limitation.
Second, although the commonsense analysis could be used to supply a missing claim limitation, when it was done so in prior published opinions, it was only able to supply missing limitations that were unusually simple and with straightforward technology. For example, if the prior art did not disclose a step of repeating prior steps, then common sense could kick in and supply that missing repeating prior steps step.
Third, use of common sense to supply motivation to combine or supply a missing limitation cannot be used as a wholesale substitute for reasoned analysis and evidentiary support. This was especially true when “common sense” was used to supply a limitation missing from the prior art references. Put simply, a logical reasoning must be put forth as to why the missing limitation could be supplied with common sense.
In Arendi, the Federal Circuit reversed the Board’s decision that the claimed invention was obvious. Some of the more salient reasons were that the Examiner and the Board were attempting to use common sense to supply a missing claim limitation that was more than a peripheral issue. In the instant case, the primary step was directed to the step of searching. The examiner and the Board agreed that Pandit did not disclose the step of performing a search. The examiner and the Board were attempting to use ‘common sense” to provide the missing step of searching which was central to the claim.
Although the court limited the use of common sense in analyzing obviousness by identifying three caveats or limitations, the Federal Circuit made clear that the result should be a logical analysis based on the evidence that supports a conclusion that it would been obvious to come up with the missing limitation. In practice, during examination, examiners have wide latitude in analyzing obviousness. Rejections based on common sense appear to be fabricated to justify their own logic, at least to my common senses. It is difficult to convince an examiner that his or her “common sense” reasoning is flawed. Any argument responding to a rejection based on “common sense” is basically an assertion that the examiner has no common sense. This is not a good way to approach the examiner who determines whether your claimed invention should be allowed or rejected.
The better approach would be to, if possible, amend the claims to provide a new or fresh approach so that examiner is provided with new information and new arguments so that the examiner can make a new decision. Nevertheless, the Arendi opinion gives patent attorneys an opportunity to mitigate any excessive and unreasonable use of “common sense” by the examiner.
I invite you to contact me with your patent questions at (949) 716-8178. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.