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“Common Sense” and “Common Knowledge” Are Insufficient to Uphold Obviousness Rejection

January 18, 2002

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Last Month at the Federal Circuit - February 2002

Judges: Newman (author), Clevenger, and Dyk

In In re Sang-Su Lee, No. 00-1158 (Fed. Cir. Jan. 18, 2002), the Federal Circuit vacated the Board’s obviousness rejection of Sang-Su Lee’s patent application, concluding that the Board had failed to meet the adjudicative standards for review under the Administrative Procedure Act (“APA”), when it failed to support its conclusion of obviousness based on common knowledge and common sense of one of ordinary skill in the art.

The PTO rejected Lee’s patent application for a video game on the ground of obviousness, citing the combination of two references: a prior patent and the “Thunderchopper Helicopter Operations Handbook.” The Board held that it was not necessary to present a source of a teaching, suggestion, or motivation to combine the references and further stated that the conclusion of obviousness may be made from common knowledge and common sense of a person of ordinary skill in the art without any specific hint or suggestion in a particular reference. The Board did not explain the common knowledge and common sense it relied on to combine the teachings.

On appeal, the Federal Circuit held that the Board’s analysis failed to comport with both the legal requirements for determination of obviousness and the APA requirements that the Agency’s tribunal set forth the findings and explanations needed for reasoned decision making. The Court concluded that the Board has an obligation to make the necessary findings and provide a record showing the evidence on which the findings are based accompanied by the Board’s reasoning in reaching its conclusions. The Court noted that in rejecting Lee’s application, neither the Examiner nor the Board had adequately supported the selection and combination of the cited references. Specifically, in stating that there was no need for a specific hint or suggestion in a particular reference to support the combination of references, the Board had omitted a relevant factor required by legal precedent. The Board’s attempt to substitute common knowledge and common sense for that factor was viewed as nothing more than the issuance of a conclusory statement that did not fulfill the PTO’s obligation to set forth reasoned findings.

In vacating the Board’s decision, the Court required that the PTO articulate and place on the record any general knowledge relied on to negate patentability. The failure to do so, the Court stated, was inconsistent with effective administrative procedure and effective judicial review. Thus, because the Board had failed to articulate its reasoning, the Court did not have a record on which to decide the final question of patentability. Instead, the Court remanded the case back to the Board to set forth specific findings.