The Limited Role of Common Sense in the Obviousness Analysis

by Dennis Crouch

Decisions by the Patent Trial & Appeal Board are rarely overturned on appeal.  I expect that result is largely due to the fact that the Patent Office has staffed the Board with highly trained and skilled patent law experts.  The other important factor though, is the standard of review.  Factual findings made by the Board are reviewed for “substantial evidence” — meaning that the findings need not be “correct” but rather rather merely supported by “more than a mere scintilla of evidence.”  Thus, patentees are hard-pressed to get a reversal based upon erroneous factual conclusions.  (For a counter-example, see In re Warsaw Ortho (Fed. Cir. 2016).

In the new decision captioned Arendi S.A.R.L. v. Apple Inc., Appeal No. 15-2073 (Fed. Cir. 2016) [ArendiApple], the court has reversed the Board – finding an erroneous application of the law.  This approach to an appeal tends to work better – because issues of law decided by the PTAB are ordinarily reviewed de novo on appeal (except where the agency’s interpretation is given deference).

The holding:

Because the Board misapplied our law on the permissible use of common sense in an obviousness analysis, we reverse.

The software patent at issue involves a identifying a key in a document (such as a person’s name) and then searching a separate data-source for further information on that key. U.S. Patent No. 7,917,843 (claiming 1998 priority).

Single Reference Plus Common Sense: In its obviousness decision, the Board identified a single prior art reference (Pandit) that teaches the recognition of text classes (such as phone numbers) and then providing additional suggestions based upon that recognition (such as dial, add to contacts, etc.).  However, Pandit did not expressly teach a search of the separate data-source.  In concluding that the invention was obvious, the Board found that it would have been “reasonable . . . common sense” that Pandit would search through the contact list for the phone number before actually adding a new contact number. The board wrote:

[I]t would have been obvious to the ordinary artisan to utilize a computerized search for duplicate telephone entries when entering a telephone number in an electronic address book database as taught by Pandit.

In making its determination, the Board held that common sense must be applied throughout the obviousness analysis, and not only when combining references that disclose all the required limitations.

On appeal, the Federal Circuit rejected the Board’s analysis – holding that Common Sense must be confined to its “proper place in the obviousness inquiry.” (I expect that this line from the opinion is one that will likely upset members of the Supreme Court because it is ridiculous.).

Caveats to Common Sense: In confining the use of common sense, the Federal Circuit identified three “caveats” to its use:

  1. “First, common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation.”
  2. Second, when common sense is used to supply a missing claim limitation, it should only apply where the missing limitations is “unusually simple and the technology particularly straightforward.”
  3. “Third . . . common sense . . . 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.”

Although not listed specifically as a caveat, the court also discussed a fourth – that statements of common sense or general knowledge cannot overcome “important” claim limitations without supporting evidence.

Question of Substantial Evidence: Stepping back from these broad statements of law, the court partially reforms its opinion to the proper question –  “whether there was substantial evidence supporting the Board’s finding that common sense would lead one to search for the telephone number in Pandit.”  In the appeal, the Federal Circuit found that no evidence had been presented regarding the common sense conclusion but rather only attorney argument. “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.'”

To be clear – I am 100% on board here – that an obviousness finding must be supported by evidence.  Unfortunately, that is not what the Supreme Court appeared to rule in KSR v. Teleflex — where it suggested that “analysis” can do the trick.

= = = = =

Arendi has infringement cases pending in Delaware against Blackberry, Motorola, Google, Apple, Sony, Nokia, HTC, Yahoo!, Samsung, and LG.  Arendi is a Luxembourg patent owner created by the ‘843’s Norwegian inventor Atle Hedløy.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

104 thoughts on “The Limited Role of Common Sense in the Obviousness Analysis

  1. It is not surprising, in exploring what was obvious to the skilled person, that tensions arise between the urge to invoke “common sense”, the danger of being influenced by hindsight knowledge of the claimed subject matter, and the need for evidence before one finds a duly issued claim invalid. Indeed, for readers of this blog (even if nobody else) it’s no more than common sense that these tensions are inescapable.

    See:

    link to patlit.blogspot.de

    the Patent Court in England is currently making similar experiences (but without ever admitting the existence of something called “common sense”). The court is interested in ascertaining, strictly on the evidence adduced, what is the “common general knowledge” the addressee possessed at the relevant date. And that is feasible, I would think.

    But hey. Since the “person skilled in the art” is not a real person, the courts of the USA are free to impute to the PHOSITA not only an ordinary amount of creativity but also an ordinary level of “common sense”. Defining what is ordinary might be hard though.

    1. Excellent post MaxDrei – and one that respects separate sovereigns while also drawing to attention concepts shared by those different sovereigns.

      For example, Judge Birss remarks upon the point of distinction already presented in the discussion here (See post 13.4.1.1). Interestingly enough, Judge Birss also places a geographical limit on the English version of PHOSITA.

      Of course, one must be careful how much power is given to a PHOSTIA, lest we reap the results of ultra thin specifications (since specifications need not be concerned with what PHOSITA knows – See KSR).

      Of course, one must also be careful of sliding too far down the slippery slope of “common inventiveness,” lest we end up at the exact same spot that spurred our Congress in 1952 to rebuke the Court and explicitly tell the Court that “Flash of Genius” is not what invention requires.

    2. You know Max, trying to figure out what one of ordinary skill knows without defining the parameters of who one of ordinary skill is in the 1st place cannot be helpful.

      I think England might be going down the wrong path just as the United States has been on the wrong path since 52. Invention should be measured objectively, such that it is provable with evidence, or disproved with evidence.

      We have 2 elements that have been put together for the 1st time. Rather than ask whether this would have been obvious to one of ordinary skill in the art with all the ambiguities that involves, would not it be simpler to find out whether the combination provides new functionality not existing by the separate application of each element in sequence? And if we have an older combination, where the substitution is of some improved part, should not we be asking whether the improvement is different in kind rather than in degree?

      I believe the same can be stated, albeit differently, when compositions are at issue.

      But when asking the question of whether a combination is obvious, one can never free oneself from hindsight.

      1. just as the United States has been on the wrong path since 52.

        LOL – that says more than you might have wished to say Ned – considering how often I have to remind you that Congress DID act as they acted in 1952.

      2. Good questions Ned. Me, I like the EPO Approach to the analysis of obviousness (as of course you know already) It is a TSM approach, which shuts out hindsight, and tends to minimise the importance of the precise definition of the knowledge level of the PHOSITA. And it is objective rather than subjective.

        What is so sad is that few outside EPO circles go to the trouble to understand the EPO’s PSA method. In particular, judges find it difficult to imagine that a mere Patent Office might routinely do obviousness more fairly and robustly than they can.

        The EPO Approach toggles between the technical features recited in the claim and the technical effects they deliver. That’s exactly what you are advocating.

  2. “I expect that result is largely due to the fact that the Patent Office has staffed the Board with highly trained and skilled patent law experts.”

    Professor (which is the only title that possibly could apply to that comment): I hereby hold you liable for the replacement cost of my white shirt, which has been irreparably marred by the red wine I just snorted through my nose.

    1. Protip: if you spill red or pink wine on white shirt, immediately (or as fast as possible) boil water in a pot, get a pan out. Take off shirt, spread it out over the pan (the pan will catch water you’re going to pour on the spot on the shirt). Pour the boiling water directly onto where the wine is on the shirt but avoid getting the water anywhere else on the shirt (or it will needlessly shrink more of the shirt). Presto, the wine comes right out as long as it isn’t dried, and even dried it usually works (can add more water to the spot to keep it wet till you get home if you’re out). Worked for me. The lower the temp that the water is at the less shrinkage, so it’s best to maybe boil let cool for a tiny bit, but just make sure it’s hot enough to still work.

      You can find this tip online.

    2. T, the real point there is that, unlike E.D. TX or other lay jurors, all APJs are at least patent attorneys, with several years of experience in reading claims against art, and usually clever enough to write final IPR decisions that are much less likely to get reversed by the Fed. Cir. than D.C. decisions, as thevery low IPR reversal rates show. Also, IPR inter parte decisions are not normally comparable to the kind of cursory decisions too often cranked out in response to ex parte application appeals that more regularly would cause you to spill your wine .
      Interestingly, this Fed. Cir. decision was a true reversal, rather than a reversal with a remand back to the Board to fix their IPR decision, as has been more common until now. If that is a trend, it is also favorable to patent owners.

    3. tour, there is also the point that issued patents are involved and a lot of money is at stake. Lots of effort from both sides. This all leads to well developed issues, etc.

  3. Obviously, striking down the nonsense generated by the effort of the PTAB in it efforts to side with petitioners, where conclusory statements by petitioners are treated as established fact or where limitations are proven by common sense, the Federal Circuit is now doing the patent system some good.

    When I see petitions that do not establish a limitation with evidence, the reason usually is that such evidence does not exist. Regardless, we had recent case that I do not believe was discussed here on Patently-O, where the PTAB openly took the side of the petitioner and began making up new arguments, citing new evidence, that the petition had never established and the petitioner had never argued. The Federal Circuit had to remind the PTAB that it was not an advocate, but a judge, and their role was to decide a case on the evidence and arguments actually presented by the petitioner.

    1. And, let me add, if the PTAB makes a mistake with respect to a petition and does not institute, generally a new petition can be filed with new evidence or argument. On the other hand, if the PTAB makes a mistake or begins to backfill for an inadequate petition, the patent owner is out his patent unless the Federal Circuit reverses, which seems highly panel-dependent.

    2. “When I see petitions that do not establish a limitation with evidence, the reason usually is that such evidence does not exist.”

      According to some on this site the PTO doesn’t need to cite evidence. Just state that “it’s so old and well known that nobody ever bothered to write it down!!!!!!” and call anybody that disagrees with you a b0tt0m f##ding patent fl&ff!ng gr!ft#r.

  4. Is there any case law that says “common sense” may be used to support nonobviousness? IMHO, common sense is a two-way street that can be used to reject a claim but may also be used support nonobviousness. Examiners often support their rejections with rationales that defy common sense for one having ordinary skill in the art, but I can’t point to a specific section in the MPEP that supports my argument.

    1. Is there any case law that says “common sense” may be used to support nonobviousness?

      There is now (arguably).

      Page 19: Only a search for “John Smith” could be relied upon to
      determine whether “John Smith” is in the database. Yet the Board overlooked this common sense distinction,
      [emphasis in original]

      Of course, understanding why this “common sense distinction” is relevant requires throwing your common sense out of the window and burying your head in the Everest of Dust kicked up by Arendi.

    2. From MPEP 2145

      Proceeding Contrary to Accepted Wisdom Is Evidence of Non Obviousness

      The totality of the prior art must be considered, and proceeding contrary to accepted wisdom in the art is evidence of nonobviousness. In re Hedges, 783 F.2d 1038, 228 USPQ 685 (Fed. Cir. 1986) (Applicant’s claimed process for sulfonating diphenyl sulfone at a temperature above 127ºC was contrary to accepted wisdom because the prior art as a whole suggested using lower temperatures for optimum results as evidenced by charring, decomposition, or reduced yields at higher temperatures.).
      Furthermore, “[k]nown disadvantages in old devices which would naturally discourage search for new inventions may be taken into account in determining obviousness.” United States v. Adams, 383 U.S. 39, 52, 148 USPQ 479, 484 (1966).

      1. But that is different than the “normal” common sense.

        Least wise with how “common sense” is desired to be used in the patent defeating sense (which is what is wanted in a ‘good for the goose, so it should be good for the gander’ sense here).

        1. Closer to the sense of “common sense” used here would be the (oft panned) “if it were obvious, it would have been already been being done” type of argument.

          You know, for argument’s sake…

          😉

          1. Teaching away is quite the opposite of common sense since it requires evidentiary statements. The law is not symmetrical since the statute states that an applicant is entitled to a patent unless…
            Inside the pto, examiners sometimes say stupid is patentable because if no one in their right mind would do it, it’s hard to say its obvious. That is, the counter argument to common sense for nonobviousness is when something defies common sense. I believe thats the subject of ryan’s mpep citation. However, just because something doesnt defy common sense doesnt necessarily mean its obvious.
            I find it ironic that discussion of common sense seems to inevitably become nonsensical.

            1. Let me give an example. Claim recites a device that includes A + B + C + D. Examiner finds first reference that teaches a different device that includes A and then finds a second reference that teaches a device, which is much closer to the claimed device, that includes B + C + D. Common sense tells me a PHOSITA would not start with the first reference and then make several changes to it and, voila, the claimed device. Instead, the PHOSITA would start with the second reference. I believe my reasoning is similar to the European standard. (i.e., start with closest reference and then determine the next step).

              To me, this defies common sense. Nonetheless, I believe there is case law holding that the order in which references are considered (e.g., primary vs. secondary) is not important.

              1. I believe the case law in general holds that the order doesnt matter unless it does. Also, i believe that it doesnt matter what common sense tells you unless you are the judge. Counsel is too biased to possess common sense.

  5. On appeal, the Federal Circuit rejected the Board’s analysis – holding that Common Sense must be confined to its “proper place in the obviousness inquiry.” (I expect that this line from the opinion is one that will likely upset members of the Supreme Court because it is ridiculous.).

    Or in 6’s case, nowhere at all.

    1. Idk what you mean, I more or less agree with them that common sense has little role in the factual consideration of determining the scope and content of the prior art, esp so in my art. It’s very rare that I could use “common sense” to magic up a not shown limitation.

      1. use “common sense” to magic up a not shown limitation

        If only there was some Supreme Court case that spoke to the issue of whether it is proper to apply common sense to call something obvious regardless of textual expression. Then we could routinely hammer that case into Examiners heads and they wouldn’t make ridiculous comments like these, amirite?

        1. “If only there was some Supreme Court case that spoke to the issue of whether it is proper to apply common sense to call something obvious regardless of textual expression.”

          That’s not magicing it up as a fact being found. That is a part of the ultimate obviousness legal determination. That’s not what is at issue in this case iirc.

          You have to separate your fact findings from your ultimate legal conclusions under 35 U.S.C 103. They’re two different things.

  6. Still doesn’t fix the constitutionality problem. The de novo / substantial evidence review must be competed by the Dist Ct, not the appellate court. The SCOTUS has repeatedly explained as much in its various public rights cases.

                1. Crowell, Granfinanciera, others.

                  Think of it logically: if the advisory opinion requires Article III enforcement, could the appellate court applying de novo / substantial evidence be the enforcing body?

                  Of course not. Enforcement of the opinion has to come in at the Article III level, and that has to be the Dist Cts.

                2. Not that the CAFC cannot be the first court to recieve a case from the PTAB, that’s for DAMM sure.

                3. …note this part of anony’s post: “ if the advisory opinion requires Article III enforcement

                  More than a little bit of jumping the gun with changing the PTAB to a mere “advisory opinion” mechanism (something previously floated as one way to save the good ship USS AIA Titanic from sinking in toto if (or when) IPR is found to be unconstitutional).

  7. Problem: Takes too long to look up information that I want to put into a document.

    Available tools: Programmable computers that can analyze any input data using logic, programmable computers that can retrieve and present data in any conceivable format, and updateable databases for storing information, where the computers and databases can be hooked together in any combination (locally, remotely, wirelessly, etc).

    What’s the non-obvious solution to the problem given that set of facts? Making you watch a cat video before you get the information?

    Common sense tells us that there isn’t a non-obvious solution because, hey, programmable computers and databases exist (in part) to make information retrieval faster. But common sense just got thrown out the window by the CAFC (again) because, apparently, when the term computer appears in a claim we were all born yesterday. Computers make information processing faster? Wow. Apparently this was figured out this morning but by tomorrow it’ll be forgotten all over again.

      1. protons, neutrons and electrons can be put together to form compounds….

        Indeed. But typically you have to put actually some together and prove that you’ve got an unexpected result before the PTO gives you a patent, at least one that you have a chance in heck of enforcing. “Dog food additive” doesn’t count.

        But great analogy otherwise! Super powerful rebuttal. And thank goodness you’re not defending this junk claim. Nope. You’re totally not defending it.

        1. prove that you’ve got an unexpected result

          There is no such requirement.

          Maybe you are confusing yourself about rebutting a prima facie case.

          Dog food additive” doesn’t count.

          Now you jumped to utility – another odd comment from you, and yes, utility is a requirement from 101. That though has nothing to do with the present conversation.

          And thank goodness you’re not defending this junk claim. Nope. You’re totally not defending it.

          LOL – ripping apart your CRP “legal” “logic” is simply NOT the same as defending ANY claim (junky or otherwise).

          You are really off your game this evening. This isn’t even close to any type of cogent reply. Are you playing “spin the number” on your short script again?

  8. The Fed, Cir. in this decision, as is too often the case, does not cite KSR as the primary controlling authority on 103, and cites KSR only for parts of KSR that it wants to cite.
    Here are some direct quotes from KSR which they have ignored that DO support “common sense:”
    “..[c]ommon sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” [My recollection is that something like this occurs several other times in the decision.] The Court also stated along the same lines that: “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.”

    1. P.S. An IPR petitioner should anticipate the risk of getting a Fed. Cir. panel like this, since so many IPRs are appealed from, and have filed an art expert declaration as to why the combination of cited references would be obvious to a POSITA as of the filing date. Even if the PTAB panel decision did not rely on that declaration, it would be there in the record to support the petitioner on appeal and any remand.

    2. Paul, is there a difference between a statement that a POSITA “may” be able to “fit” multiple patents together, and evidence that one would do so without doing damage to the primary references such as by eliminating or undermining a reason or purpose for the invention of the primary reference?

      Consider the case of the marine CO sensor. Evidence was that the manufacturer had been sued many times for poisoning crew, but still had not hit upon the modification made by the inventor who solved the problem. The PTAB had said it was obvious to look to the automobile industry for the solution, despite the fact that using their sensors wouldn’t work in a marine environment. I think the PTAB used the lingo from KSR about “predictable” functionality of the combination to find the invention unobvious while overlooking everything else that would have told anybody with an ounce of common sense that the invention was not obvious at all.

  9. “To be clear – I am 100% on board here – that an obviousness finding must be supported by evidence. Unfortunately, that is not what the Supreme Court appeared to rule in KSR v. Teleflex — where it suggested that ‘analysis’ can do the trick.”

    Is there a particular quote, or quotes, from KSR that you think suggests that?

    1. Don’t Zurko and Gartside say that administrative decisions have to be based on substantial evidence? KSR was an appeal of a district court case.

      1. YES! Zurko renders official notice by the PTO illegal under the APA, even though district courts are nevertheless allowed to take judicial notice.

        1. Nah bro. The PTO even took official notice of a limitation in Zurko and the officially noticed limitation wasn’t even challenged. What was challenged was something different. Common misconception.

          1. “…and the officially noticed limitation wasn’t even challenged.”

            I wouldn’t go so far as to say ” Zurko renders official notice by the PTO illegal under the APA” but its use by the examiners is pointless as all Applicants are required to do is demand documentary evidence and its use by the Board is fairly well circumscribed by Zurko.

            So why use it? Of course, the answer is: laziness. But there’s nothing Applicants can really do about that.

    2. “Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F. 3d 977, 988 (CA Fed. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.

      1. “As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”

        Okay. But the “inferences” and “creative steps” that PHOSITA would make still have to be based on what PHOSITA knows, and there has to be evidence of what PHOSITA knows.

        1. Can evidence come from inference?

          If there’s no dispute that PHOSITA can program a computer to identify a key term and display a query to a user asking whether to put the term in a database, do I have to present evidence that the PHOSITA can program the computer to add two numbers together (because you added the limitation “wherein the computer can be separately configured to add two numbers together”)? Seems like whack-a-mole to me, with one of the parties extremely deserving of a whacking.

          KSR wasn’t decided in a vacuum.

      2. I like this part of the block quote:

        “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements;

        1. I like this part of the block quote:

          ““[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements;“

          But conclusory statements with lots of random capitalization and bolding — now you’ve got a decimating argument!

  10. DC: To be clear – I am 100% on board here – that an obviousness finding must be supported by evidence. Unfortunately, that is not what the Supreme Court appeared to rule in KSR v. Teleflex — where it suggested that “analysis” can do the trick.

    If the “limitation” in question is logical reasoning applied to some species (or genus) of information, then a reasonable analogy based on the prior art would seem to qualify as sufficient “evidence”.

    That’s the thing about logic: if something makes logical sense now given a particular set of facts/technology, it made logical sense before given the same set of facts/technology. The game played by the “do it on a computer” crowd, of course, is to speculate about applications of logic that are going to become popular as a result of increased computer speed. That kind of speculation is not patent-worthy “innovation”, and “it’s more popular than anyone could have imagined” doesn’t make obvious junk any less obvious.

    1. then a reasonable analogy based on the prior art would seem to qualify as sufficient “evidence”.

      Not sure why you put evidence in quotes, but in the present case, did the one side even bother to do what you are suggesting here?

      1. “anon” Not sure why you put evidence in quotes,

        I’m recognizing that the line between argument and evidence is blurry, to say the least, when we’re talking about the obviousness of logic.

        in the present case, did the one side even bother to do what you are suggesting here?

        Yes they did:

        Appellees argue that Pandit itself discloses that the claimed searching was known in the art. Specifically, Pandit teaches that methods for “searching of large volumes of text, such as encyclopedias or legal case books, using key words or search terms” were well known in the art. Appellees maintain, therefore, that the Board properly found that “the mere retrieval and display of useful pre-existing information to a user, using known methods” would have provided a “benefit that readily would have been apparent to one of skill in the art.”

        And of course that’s true. Automatically retrieving information related to a search term is useful. And computers could do it! That’s what was in the prior art. But watch what the CAFC does here:

        We agree with Appellees that this broader notion of searching for data in a database is supported by substantial evidence …

        But there’s actually more to it than that because Pandit teaches more than just that. Pandit’s claims teach more than just that. It’s not just the “broad notion of searching for data.” It’s the specific notion of taking a “key term” found in one place (anyplace) and finding information related to that term in a distinct database. That’s what Pandit teaches computers can do. And Pandit also, teaches, of course, that “key terms” can be identified automatically.

        Then follows the CAFC’s Big Lie:

        But Appellees have 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.

        And that statement is simply false. The utility of searching for data was established by Pandit. The undisputed fact that there’s a recognized utility for searching a database using a key term is the reason why it’s “proper to extrapolate” from “automatically recognize a telephone number that can be automatically to a database” to “display information related to the telephone number that’s already in the database.”

        The silliest part of all this has got to be Arendi’s dust-kicking around “telephone numbers” as if there’s something confounding about them. They argue “Given a phone number, nobody would ever look in their address book to see if a phone number was already in there!” Well, I sure would, at least in the beginning stage. And there’s nothing in the claim — there’s never anything in any of these junk claims — saying that the database has to be s00per d00per huge.

        This opinion is a j0ke. And the claim at issue is functionally claimed “do it on a computer” junk. Nobody could have predicted.

        1. I’m recognizing that the line between argument and evidence is blurry, to say the least, when we’re talking about the obviousness of logic.

          Is that from some recognized treatise on evidence, or is that from the school of “evidence” that was just panned here?

          1. Is that from some recognized treatise on evidence

            Why don’t you read them all and let us know? After all, you’re a very serious person.

            1. You are the one advancing it – do you mean that you do NOT know….?

              (That’s rhetorical – your “very serious” poker tell has already supplied the answer that you pulled that out of your arse)

        2. I am also no seeng the “reasonable analogy” that you mention (I see you making additional arguments and commentary, but is that what the other side did? As you have supplied, they did not but try the NOT reasonable argument that the court did not accept.)

          1. Prior art teaches: “searching … using key words or search terms” and displaying results of search

            Prior art teaches: automatically identifying key term and asking if you want to put key term in a searchable database

            Common sense teaches: if my phone number list has one number in it, I don’t need to enter the same number again because … it’s already in there

            Common sense teaches: if I want to avoid putting two identical numbers in my phone number list, I check my memory to see if the number is already there or I check my phone number list directly

            By analogy, programming a computer to automatically check to see if a phone number is in a database before asking me if I want to add the number to my database is … (wait for it) … common sense.

            That’s the thing about logic: the motivation to use logic is …. it’s logical. There are definitely situations where what seems logical turns out to be illogical because all of the relevant facts weren’t known. But this is definitely not that kind of situation, nor are such mistaken fact situations representative of the typical background for the reams of junky “do it on a computer” claims that the PTO spews out. Computers receive input data and they process it according to how they are instructed to process it. Databases store information. Computers interact with databases for the purpose of speeding up information processing and increasing information storage capacity relative to non-computer alternatives. Those are the relevant facts for pretty much every “do it on a computer” “innovation.”

            And then there’s logic. Now the CAFC — this panel at least — is trying to take the most basic logical propositions and turn them into evidentiary issues. But everybody knows it’s turtles all the way down. Maybe we can’t prove anything! Except infringement of course.

            1. Great – As I said, YOU added additional commentary and argument – but it is NOT apparent that THAT is what the one side in the case here did. Again, they only started down a path and left it at a point that the court did not find enough.

        3. Why it would be common sense for the ‘Add to address book’ function to operate by first searching for entries with the same telephone number? Oh I don’t know- maybe to follow the very first rule of designing a database, which is to minimize duplicated information? A rule so basic that it would never appear in a patent reference?

          These claims have no “novel structure”, no “improved use of a computer” no nothing but abstraction piled on abstraction.

          As long as there has been data, there is has been this exact transaction.

          A detective looks up a license plate number to find the hit skip suspect’s name, then they run the car-owners name against the criminal ID database…and a million other scenarios actually using some element of data.

          This is a wholesale rejection of KSR, because if you faithfully apply KSR and the judicial exceptions to 101, you get about 1/4 of the number of patents in the world, and that’s just bad for the patent court and the patent office and the patent bar, and that just can’t be allowed.

          1. What if my common law wife (with her maiden name and her adult child from a previous marriage (a third name) all live in my house under one number….?

  11. Love how the panel here just swats away Perfect Web:

    Second, in Perfect Web, the only case Appellees identifies 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. “The patented invention involves comparing the number of successfully delivered e-mail messages in a delivery against a predetermined desired quantity, and if the delivery does not reach the desired quantity, repeating the process of selecting and e-mailing a group of customers until the desired number of delivered messages has been achieved.” Perfect Web, 587 F.3d at 1326. There, the missing claim limitation—step D of steps A-D—was nothing more than an instruction to repeat steps A, B, and C until a particular
    quantity of email was sent in accordance with the claim. By contrast, the missing search at issue here “plays a major role in the subject matter claimed” and “affects much more than step (i).”

    Pretty sure the “repeat until desired quantity achieved” step in PatentWeb’s claim played just as “major” of a role in the claim as the “look for the data until you find it” step in Arendi’s claim. In any event, each step in both claims is about as simple and “technologically” straightforward as a step can get.

    What’s most curious about this decision is how/why CAFC ended up picking this junky claim to stand for the proposition that “data is not just data when one is searching a database.” In other words, the CAFC leans heavily on the bizarre notion that just because the prior art taught, e.g., the use of computers to remotely control spacecraft flying to and from outer space sixty years ago, it doesn’t mean that using a computer to search for text in a database was “straighforward” twenty years ago. That’s a remarkable proposition! But, hey, cell phones are s00per shiny and without junky patents nobody would know what to do with them.

    1. That makes two recent cases where the CAFC has treated specific data recited in a claim as limiting. The other case was Respironics v. Zoll decided at the end of July, which Dennis and Jason haven’t had a chance to post about, yet.

  12. ” Thus, patentees are hard-pressed to get a reversal based upon erroneous factual conclusions. ”

    While this is true, having an erroneous factual finding “overturned” in prosecution as a whole is usually pretty easy if you know what you’re doing and how to hold the examiner’s hand.

  13. [T]he Patent Office has staffed the Board with highly trained and skilled patent law experts

    In my experience, the “death squad” characterization is accurate. They’re bureaucrats who enjoy being called “judge” a little too much. I hate the expression, but whenever I see a Federal Circuit affirmance of a PTAB decision, I think of the standard of review, and the phrase “good enough for government work” comes inescapably to mind. I suppose it’s still better than an East Texas jury, but so far I’m unimpressed.

  14. It’s worth noting that 1998 was before most of us owned cell phones. “Common sense” is a malleable concept when viewed in a historical context. Perhaps the court’s conclusion was wrong in this particular case. However, those that immediately jump to conclusions based on “common sense” have clearly not thought about this topic in sufficient detail.

    1. iit: It’s worth noting that 1998 was before most of us owned cell phones.

      That’s nice. Most of us didn’t have thumb drives either. This case has nothing to do with cell phones or thumb drives.

      “Common sense” is a malleable concept when viewed in a historical context.

      At what point in history was the underlying logic here not common sense?

      (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

      Got that? You have information in a document about a person. You want more information about the person. You go to a second document (e.g., an address book) to get that additional information, using the first information to guide you.

      When was that not common sense? When did that kind of low-level logic become a “mechanism” that merits patent protection? The apparent answer: 1998. Gee, I wonder else was going on in the awesome world of patents in 1998.

      1. MM – you are proving my point in 3.0. Apple’s attorneys apparently did a poor job in advocating their client’s position under your interpretation of the case.

        1. Apple’s attorneys apparently did a poor job in advocating their client’s position

          I’m not saying that Apple couldn’t have done a better job but … they did win at PTAB.

          This was a panel-dependent decision if there ever was one, and it’s a decision that doesn’t stand up to even modest scrutiny.

    2. 1998 was before most of us owned cell phones, but it wasn’t before most of us had dealt with databases or the desirability of having uniqueness constraints on multiple columns of a database, or before checking such constraints was well-known in the art. The decision even documents that (pp 16-17).

      What makes this case unfathomable to me is that the Fed Circuit states that even though avoiding duplicate general data columns of a database was in the prior art, and avoiding duplicate names and addresses in a database of contacts was explicitly in the prior art, avoiding duplicate *phone numbers* in a database of contacts wasn’t in the prior art, and yet also wasn’t common sense.

  15. The CAFC, making a complete f00l of itself:

    Yet the burden is Appellees’ to provide more than a mere scintilla of evidence of the utility of a search for a telephone number before adding the number to an address book, where such a search is not “evidently and indisputably within the common knowledge of those skilled in the art.” Hear-Wear, 751 F.3d at 1365-66.

    B -b-b-but searching for telephone numbers of online bingo managers isn’t in the prior art! It can’t be “common knowledge” to search for those numbers! Besides, why would anyone do that? What possible use what that number be? Hence, no scintilla.

    Oy.

  16. “On appeal, the Federal Circuit rejected the Board’s analysis – holding that Common Sense must be confined to its “proper place in the obviousness inquiry.” (I expect that this line from the opinion is one that will likely upset members of the Supreme Court because it is ridiculous.).”

    You call it ridiculous, and then right after that you ironically proceed to very nicely summarize the court’s excellent explanation of why it does in fact make perfect sense.

    1. As applied to the facts in this case, those silly “caveats” limiting when you can apply common sense are incredibly ridiculous.

      This is just another classic example of the CAFC bending over backwards because, wowee zowee, that’s a s00per d00per shiny comp00ter!

      The prior art taught that computers could be programmed to search for information and find it. But this computer searches for personal information which, is like, totally different! Because …. man, that’s s00per d00per shiny comp00ter.

      Love this bit from the specification:

      the ’843 patent discloses mechanisms for analyzing the document to identify the presence of name … information, including by analyzing:

      Mr., Mrs., Sir, Madam, Jr., Sr. designators and abbreviations, etc

      Brilliant! Nobody could have predicted that a person’s name might follow… a name designator! Nothing common sense at all about that. There’s no “sense” to it whatsoever. On the contrary, it’s a remarkable “mechanism” — the inventor said so!

      Golly, how would I go about engineering a “mechanism” to figure out if there’s any information about a cat in a document? Where would a person even start to solve that super technical problem? I guess I’d have to call up a document engineer to figure it out. Those guys are probably expensive, though. You need a college degree for this stuff, definitely.

      [Moore, Linn and O’Malley — heckuva job]

        1. Common sense in 1998 would seem to suffice perfectly well.

          Evidence of teaching away from using computers to automate text-based searching for the purpose of convenience would be appreciated by the patentee, I’m sure.

          1. You are barking at the wrong side for evidence.

            And please note, this is not a “defend the claim” comment, but rather it is a “know your legal process” comment.

            The simple lesson here is that you actually have to make your case (and one side flubbed that).

            1. If a CAFC panel has it in its collective head that it’s going to engage in question-begging nonsense about “what are these database things for anyway?”, it’s not “flubbing.” It’s just bad judging and bad luck.

      1. What if “common sense” is wrong, as it so often is?

        link to factsandreason.blogspot.com

        “People who do not have facts and reason to support their beliefs often appeal to ‘Common Sense’ without any definition of the term or how they know it applies to the situation. A typical definition of common sense is, ‘sound practical judgment that is independent of specialized knowledge, training, or the like’ (Dictionary.com). Most definitions include phrases equivalent to ‘sound judgment’, and if we accept that definition, then common sense can never be wrong. However ‘common sense’ is often used as a substitute for sound judgment or in situations where specialized knowledge or training is required to make a sound judgment. In fact, when a person appeals to ‘common sense’ it usually means something that the person believes to be so widely accepted that it must be true (Argument by popularity).

        At one time it was common sense that the earth was flat and sat at the center of the universe, which revolved around it. This is just one example of how common sense depends on the context, knowledge, and experience of the observer.

        *****

        As science historian Daniel Boorstin, writing about the rise of scientific methodology and its contradiction of commonly held beliefs, noted, ‘Modern Western science takes its beginning from the denial of this commonsense axiom… Common sense, the foundation of everyday life, could no longer serve for the governance of the world.’ (The Discoverers, A history of man’s search to know his world and himself)”

        In 2015, it was “common sense” that Donald Trump would not be the Republican nominee for president. How accurate was that “common sense” prediction?

        link to usnews.com

        link to theguardian.com

        link to msnbc.com

        1. Your thoughts lead also to the view that what people “want” from the courts is not so much “common sense,” but rather an application of “common law” – unconstrained by the fact that patent law is expressly** statutory law (and all that THAT entails).

          **Congress did share a specific power with the courts – as I have noted previously.

        2. Well when you cherry picked a meaning you failed to acknowledge that “common sense” has a specialized meaning in the patent context- it means the non-codified but extant expected baseline knowledge of any PHOSITA.

          More broadly,  Wikipedia says common sense is a basic ability to perceive, understand, and judge things, which is shared by (“common to”) nearly all people and can reasonably be expected of nearly all people without any need for debate, citing:

          Merriam-Webster gives: “sound and prudent judgment based on a simple perception of the situation or facts”. [1], Merriam-Webster’s Online Dictionary. The Cambridge Dictionary defines it as, “the basic level of practical knowledge and judgment that we all need to help us live in a reasonable and safe way”.[2], Cambridge Dictionaries Online. van Holthoorn & Olson (1987, p. 9) say that “common sense consists of knowledge, judgement, and taste which is more or less universal and which is held more or less without reflection or argument”. C.S. Lewis (1967, p. 146) wrote that what common sense “often means” is “the elementary mental outfit of the normal man”.

          This is directly pertinent to what KSR was intended to mean:

          “We build and create by bringing to the tangible and palpable reality around us new works based on instinct, simple logic, ordinary inferences, extraordinary ideas, and sometimes even genius. These advances, once part of our shared knowledge, define a new threshold from which innovation starts once more. And as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts. See U. S. Const., Art. I, §8, cl. 8. These premises led to the bar on patents claiming obvious subject matter established in Hotchkiss and codified in §103. Application of the bar must not be confined within a test or formulation too constrained to serve its purpose”.

            1. “Well when you cherry picked a meaning you failed to acknowledge that “common sense” has a specialized meaning in the patent context- it means the non-codified but extant expected baseline knowledge of any PHOSITA.”

              Where does Title 35 define this “specialized meaning” of common sense?

              Why just admit that the Supreme Court was effectively using Albert Einstein’s definition of “common sense”:

              “Common sense is the collection of prejudices acquired by age eighteen.”

              In this case, the “prejudices” involved were the prejudices of 9 scientific ignoramuses at the age of 18 who hate patents.

              Also, historically, “common sense” has most commonly been used to justify opinions that are not based on facts:

              Before 1947, it was “common sense” that blacks could not play baseball as well as whites.

              It was common sense that blacks were not smart enough to play quarterback successfully in the NFL.

              It was common sense through up until the 20th century that women should not be given the right to vote because they were unfit to vote.

              For well into the 20th century, it was “common sense” that none of the “inert gases” in the periodic would react with any other element.

              For well into the 20th century, it was “common sense” that the continents did not slide around on the the surface of the earth.

              Etc., etc., Etc.

              There are many, many examples of “common sense” being wrong.

              1. You are confusing (again?) common sense with something similar, but not the same: conventional wisdom. Common sense is considered a virtue.

                And we should argue that all of patent law as practiced can be found in Title 35? The notion of PHOSITA is itself a version of common sense- the whole concept must exist because the concept of obviousness cannot be untied from a Platonic, implicit base of knowledge that all participants are assumed to share.

                Any proposition can be debated- the point is that the basics should be beyond argument or need for codification- such as not duplicating data in a table without a darn good reason.

                1. “You are confusing (again?) common sense with something similar, but not the same: conventional wisdom. Common sense is considered a virtue.”

                  “Common sense” is not necessarily considered a virtue. I repeat Einstein’s definition which is pretty darn accurate most of the time from my experience:

                  “Common sense is the collection of prejudices acquired by age eighteen.”

                  “And we should argue that all of patent law as practiced can be found in Title 35? The notion of PHOSITA is itself a version of common sense- the whole concept must exist because the concept of obviousness cannot be untied from a Platonic, implicit base of knowledge that all participants are assumed to share.”

                  And what is commonly said about what making an assumption does?

                  One of the many flaws of the Supreme Court’s idiotic KSR decision is that it makes an inaccurate assumption about what a person of ordinary skill in the art knows about other fields. The trend in many fields of science and technology is specialization so that a typical scientist and engineer in many fields is at best only an expert in a subsection of his/her field, much less an expert in other “related” fields. The 9 ignoramuses of the KSR Court assumed, based on absolutely no evidence, that the typical scientist or engineer today is an expert in all sorts of other fields, sort of like the Professor on Gilligan’s Island who can make everything from a toaster to a nuclear reactor out of a radio. However, the Professor on Gilligan’s Island is a fictional character, similar to the Supreme Court’s version of a “person of ordinary skill in the art.”

                2. Yes, it would be so much better for the patent bar, the patent office, and the patent court if everyone was born last night and had no knowledge of the world except patent references, which should clearly be considered the only true reflection of what people know.

                  How could the Supreme Court of thought otherwise?

                  anon I know you can’t stand it when people aren’t talking to you, but in general, virtue is desirable in our systems of government and vice is to be avoided.

                  Also the truism that anything can be debated is balanced by the lived reality that many things are not meaningfully debatable and so debating them is either sophistry or theft, depending on your perspective.

                  It also would suit the patent bar, the patent office, and the patent court not only if patent references were the sum of knowledge, but that people’s knowledge would be neatly partitioned by arbitrary distinctions of what an “art” may be.

                  That’s a core problem with the information age patents: the info is massively diffused and available, and the act of applying information technology to productive use often involves aspects of many different “arts” because models and simulations require knowledge of both the real-world object and the modeling technology.

                  Patent extremists, and you know who you are, believe that every incremental innovation of any kind deserves a patent. That can’t be- that’s what KSR truly stands for- and that’s why its undermined and rejected at every turn by the entrenched patent interests.

                  Common sense says don’t duplicate data in a table without a good reason. That’s hardly an accumulated prejudice.

                  Beyond physics- before his first wife was kicked to the curb- Einstein didn’t appear to know jack about anything important.

                3. What does “considered a virtue” have to do with anything here?

                  You need more to make the distinction that you appear to want to make (check out post 13.4.1).

                  As for any “implicit base of knowledge that all participants are assumed to share” – don’t assume.

                  You yourself then state “Any proposition can be debated” which mirrors my reply to you above at post 1.2.2.2.1.

                  And finally, you appear to miss the point of what A Rational Person is saying (you are too busy trying to make a difference without a distinction). It can be easily said that the examples he provides (under either label of “common sense” OR “conventional wisdom” fit what is being attempted in the here and now at the focus of this thread.

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