What it takes to Prove a Motivation to Combine

by Dennis Crouch

In re NuVasive (Fed. Cir. 2016)

In an important obviousness decision, the Federal Circuit has reversed the PTAB IPR decision – holding that the PTAB failed to sufficiently explain its ruling that a person having ordinary skill in the art (PHOSITA) would have been motivated to combine the prior art teachings to create the patented invention.  Although expressing its intent to follow KSR, the court here comes closer to trodding upon that (oft maligned) precedent.

The case involves an Inter Partes Review (IPR) challenge of NuVasive’s spinal fusion implant patent (U.S. Patent No. 8,361,156).  The claims require that the implants include, inter alia, radiopaque markers on the medial plane. The PTAB found the claims invalid as obvious based upon a collection of prior art references related to spinal fusion.

Doctrine of Obviousness: A claim is invalid if the differences between the prior art and the claim (considered “as a whole”) would have been obvious to PHOSITA considering the issue at the time the invention was made.  35 U.S.C. § 103.

Motivation to Combine: In many US obviousness cases, each of the claim limitations are found in some form within the body of prior art imputed to PHOSITA and the obviousness question becomes whether it would have been obvious to combine those references to form the claimed invention. In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme Court held that the motivation to combine references need not be found expressly in the prior art itself but may be explained by the fact finder using common sense.  Still, the KSR Court wrote that it “can be important to identify a reason that would have prompted [PHOSITA] to combine the elements in the way the claimed new invention does.”  Extending that decion, the Federal Circuit ruled that the PTAB must (1) “articulate a reason why a PHOSITA would combine the prior art references”; (2) have an adequate evidentiary basis for that finding; and (3) provide a “satisfactory explanation” for the motivation finding that includes an express and “rational” connection with the evidence presented.  See, In re Lee (conclusory statements are insufficient); Cutsforth v. MotivePower (must positively explain motivation – not just reject arguments against motivation); and Arendi v. Apple (PTAB “cannot rely solely on common knowledge or common sense to support its findings” of motivation).

Here, the basic question is whether it would have been obvious to combine prior art teaching the spinal fusion implant with references showing the use and importance of radiopaque markers in implants.  However, according to the appellate panel, “the PTAB failed to explain the reason why a PHOSITA would have been motivated to modify [the prior art], to place radiopaque markers ‘proximate to said medial plane'” as required by the challenged claims.

After discrediting the PTAB decision, the court also looked at the evidence presented by the challenger Medtronic.  Medtronic’s expert had explained that the motivation for adding the additional markers would be to provide surgens with “additional information” and that it would have been common sense to add the additional markers.

Medtronic’s arguments amount to nothing more than conclusory statements that a PHOSITA would have been motivated to combine the prior art references to obtain additional information.  According to the court, these “arguments amount to nothing more than conclusory statements” and thus should not be credited.  One key reference did explain that the medial markers were beneficial during the alignment process.  However, the Federal Circuit rejected that reference because it was published after the patent-in-question’s priority date and not cited in the prior art references.  Because they came after the priority date, the court found that the motivation “could not have been obtained . . . at the time of the invention.”

94 thoughts on “What it takes to Prove a Motivation to Combine

  1. Another 8-0 or 9-0 beatdown on the way if this is granted cert next year. KSR said no mandatory TSM test, CAFC says yes there is, for the second time.

    This is another on a plane, in a train, on a boat type claim. Radiopaque marking was well known, the idea to use it in this instance is new, but not inventive. That many things can be new but not inventive is the entire point of KSR.

      1. “Inventive” is a noteworthy use of imagination and creativity.

        It is not the generation of new and different patterns using tools and techniques well-known to produce similar patterns.

        As finely stated in KSR:

        “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”.

        1. Thanks Martin.

          I have said that KSR is actually consistent with TSM, because it requires that the art have a known problem to be solved. This is, in my opinion, the same thing since the requirement to show some motivation to get from this known problem to the claimed solution is still there.

          What the PTAB was doing for a long time after KSR, and might still be doing to some patent owners, is neither requiring the showing of a known problem, nor requiring proof of motivation. Rather the petitioner and the PTAB found it acceptable to locate the elements of the invention in the prior art from the claim (hindsight, of course), and then simply declare victory by further stating, without evidence in support, that the combination functions in a expected way.

          Thus the claim to the Mona Lisa must be declared obvious because all its elements were known, and the paints, canvases and colors all worked in an expected way.

          In other words, the PTAB used KSR in about as st 00pid a manner as one could devise.

          1. Every slippery slope argument depends on the facts at hand. A flash of genius is not required. Because most people are honest and most believe in principle the social utility provided by patents, people in industry can judge quite well when an innovation is valuable and out of the ordinary. The distinction between junk and gem is distinguishable.

            Maybe we should reform expert practice so the experts work for the court, with lists generated by conferring litigants, using larger numbers of expert participants with less- exacting qualifications, and only allowing written answers to court-approved and construed inquiries. Sort of a crowdsourced quasi-jury of experts to advise on the Gestalt of a purported invention and advise the factfinder as needed. We need a living stand-in for PHOSITA.

            The alternative, of allowing patents on every variation of a theme, is a disastrous slope the other way.

            1. New and not obvious is sufficient. There is no requirement that the invention be “inventive,” what every your definition of that word might be (unless you mean not obvious).

                1. KSR is the controlling case. It says, plain as day, that “the results of ordinary innovation are not the subject of exclusive rights under the patent laws”

                  You parse that.

    1. Not only was an RO marker old hat Martin, but also putting more than one RO marker on an implant.

      One marker will reveal to you, in an X-ray image, where the thing actually is. Two markers though. How about that? That can tell you more, like how it is oriented.

      Now with a stent, you need to know where it is. But with an inter-vertebral disc, wouldn’t it be nice to see, in an X-ray. how it is oriented relative the vertebral bodies above and below it? Concerned patients want to know.

      And for how many years before the date of this claim have people been squinting at X-ray images of spines with implants in them, trying to see how the land lies?

      Perhaps the CAFC panel was infuriated, that in such an open and shut case, the USPTO was still incapable of coming up with even a semblance of reasoning. Perhaps then it saw this case as an ideal one, with which to rap the Board on its knuckles.

      1. “And for how many years before the date of this claim have people been squinting at X-ray images of spines with implants in them, trying to see how the land lies?”

        How long indeed? And how many years must a man squint at an x-ray before an improvement no one implements is deemed not obvious?

        The answer my friend….

        1. Ah Les, there you go again with your argument: “If it were obvious, they would have already done it. And they didn’t until now and so, ergo, it’s not obvious”.

    2. It’s not about the substance, it’s about the procedure. It’s about giving the patentee/applicant whose claims have been rejected/cancelled fair notice and ability evaluate the merits of the rejected/cancelled claims. It’s about fairness, not a particular outcome.

  2. It’s like, it was conventional to put an RO marker on a stent. And then this guy claims a stent with an RO marker “at each end” of the stent. And the court then says that the petitioner has not made out its obviousness attack. All a bit silly really.

  3. DC Medtronic’s arguments amount to nothing more than conclusory statements that a PHOSITA would have been motivated to combine the prior art references to obtain additional information. According to the court, these “arguments amount to nothing more than conclusory statements” and thus should not be credited.

    Dennis, I think you copied a sentence from the CAFC’s opinion without quotes, and then you wrote your own summary where you quoted from the previous sentence. Kinda confusing.

    One key reference did explain that the medial markers were beneficial during the alignment process. However, the Federal Circuit rejected that reference because it was published after the patent-in-question’s priority date and not cited in the prior art references. Because they came after the priority date, the court found that the motivation “could not have been obtained . . . at the time of the invention.”

    On its face, this sounds like a giant heap of poor reasoning. If the authors of the reference were unaware of the disclosure in the specification (e.g., because the spec was unpublished), the motivation they provide is evidence that one skilled in the art could have been so motivated as of the critical date. In other words, it’s not “hindsight” to suggest that motivation. The motivation was, in fact, suggested by skilled artisans.

    Also, let’s face it: markers are useful for marking stuff. Biomarkers are useful for marking biological stuff. Was there some teaching away from using these biomarkers to mark stuff “proximate to the medial plane” of the spine? I’m not the Director of HUD or anything but I’m guessing not.

    1. OMG, you are so quick to say everything is obvious, you are making up subject matter. No one said anything about “biomarkers.” The controversy is over radio-opaque markers. That is, things that will show up in an xray to make it easier to tell where the implant is after the surgery……

      ” let’s face it: markers are useful for marking stuff. Biomarkers are useful for marking biological stuff.”

      gimme a break.

      1. biomarker: a measurable substance in an organism whose presence is indicative of some phenomenon

        The controversy is over radio-opaque markers. That is, things that will show up in an xray to make it easier to tell where the implant is after the surgery

        And when was that first disclosed? In this patent’s specification? Nope.

          1. When was what disclosed? What radio-opaque means?

            Please try harder.

            The prior art disclosed generically the use of radio-opaque markers in the human body, for all kinds of reasons (more accurately: for any reason that you might want to use an x-ray detectable marker). If you want to claim a species, you better have some unexpected results or some teaching away. Otherwise, well, no patent. And, yes, that result is a feature of a functioning patent system.

            1. Try harder to do what? My only point was you were rolling your eyes about bio-markers and this has nothing to do with bio-makers and you say everything is obvious.

              If it was soooooo obvious to do what the inventor did, why didn’t anyone do it already?

              You are a suuupper seerrrious person…. so, you must be able to explain that.

              1. Les,

                Hand over your car keys please. The “why did no one do it” (without more, like “long felt nead”) is an extremely weak argument for overcoming obviousness.

                1. “The “why did no one do it” (without more, like “long felt nead”) is an extremely weak argument for overcoming obviousness.”

                  Wrong. Wrong. And wrong. Unless you mean to exclude effective argumentation to juries of everyday people. Then you’re right.

                2. My point requires the effective argumentation, Tourbillion (that would be the distinction with Les’s attempt without more).

                3. Was the need not long felt here? Must every post be drafted like its a brief before the Supreme Court. Can nothing ever be implied? Go police there, their and they’re on twitter will you?

                4. Les,

                  You simply try to imply too much with the question “Why has no one done this before?” when you ask that question without more.

                  The question on its own is simply a poor mechanism to establish non-obviousness.

                  One does not need anywhere near a brief drafted as if for the Supreme Court to get that simple principle.

                5. Your feelings are noted Les.

                  Now focus on the fact that what I have posted is absolutely correct.

                  Here’s a hint: focus more on the content and less on your feelings.

    2. Malcolm, you say it is not hindsight, but you also (only) use the applicant’s own application as that which is what provides the motivation.

      What you did IS a classic sign of hindsight.

    3. The end of the article misquotes and misrepresents the conclusion of the court. First, there was no “one key reference” that the CAFC referred to. It was testimony of an expert. Second, the last line which is a mangled quote, is missing a key negative. The last line of the article should have stated: Because it came after the priority date, the court found that NEITHER the benefits nor the motivation “could have been obtained…at the time of the invention.”

  4. OT, but for all those pendulum watchers out there:

    The ineligibility of MacroPoints junky freight tracking claims was affirmed today by the CAFC in another Rule 36 decision. Is it the second or third ineligibility decision affirmed this week?

    A very good guess for the next Rule 36 decision upholding an ineligibility finding would be SmartFlash v. Apple, argued yesterday — and argued very well by Apple’s attorney, with the usual caveat that the attorney’s hands are tied and so he can’t touch the elephant in the room.

    Good quotes from Apple: “These claims were killed by Bilski, buried by Alice, and the nails were put in the coffin by PTAB.”

    “There is a relation between [101 and 112] and this case is an excellent illustration. This kind of functional claiming where the patentee/applicant claimed only the result … raises a serious indefinite problem. … The inventive concept claimed by [the patentee] … is [b l a b l a h b l ah functions]. This function is not defined by structure … but rather repeated references to means. We have functional claims and a functional specification. …”

    Judge Lourie asks a question which proves that at least some CAFC judges are thinking ahead: “Is the computer modified in a physical way or is this … just … mental steps written down and getting the computer programmed?”

    I strongly recommend listening to the oral argument. It’s one of the best argued 101 cases I’ve listened to in quite a while, at least from the defense perspective:

    link to courtlistener.com

      1. (and yet another reason for a detailed expose of the history of the mental steps doctrine to help ward off the zombification of that relic in the name of the anti-software curse-ade – from a source that Malcolm instantly won’t reject)

          1. There’s no “false equivalency.”

            Computers are old tools used for carrying out logic. Pencils are old tools for carrying out logic.

            Arguing that “computers don’t think” or “pencils don’t think” completely misses the point that, at the end of the day, what is being protected when those tools are used are mental steps (i.e., logic).

            This isn’t even controversial. The logical result is controversial because it will make you and your patent maximalist c0horts cry a river full of alligator tears. Your plate of quail will get all soggy! Boo hoo hoo.

            1. Computers are old tools used for carrying out logic.

              Your [Old Box] fallacy rears its head – your [Old Box] simply does not have all future improvements “already in there” – improvements that come from the design choice of “wares” (hard, firm, or soft).

              Anthropomorphication does NOT miss the point – it nails the point.

              And again – this is why a more detailed expose of the mental steps doctrine would be very useful. And even more useful coming from someone whom Malcolm won’t reject out of hand (if Malcolm could ever get out of his own way of the his way against everyone else in a single bucket mentality).

              1. your [Old Box] simply does not have all future improvements “already in there” –

                “Your [Old Recipe Book] simply does not have all future improvements ‘already in there’.”

                So. What.

                1. Double down with a book fallacy…?

                  How quaint.

                  Especially as you have volunteered an admission against your interests with knowing and understanding controlling law when it comes to the exceptions to the judicial doctrine of printed matter.

                  Not sure why you want to gift me with another white horse on this topic….

              2. a more detailed expose of the mental steps doctrine would be very useful.

                Go right ahead! You’re the expert. The floor is all yours.

                Try starting from the beginning.

  5. Has anyone ever seen the mythical examiner affidavit required when requested under 37 C.F.R. 1.104(d)(2)? If so, could you point me to the file history so that I can see such a rarity.

    37 C.F.R. 1.104(d)(2):
    “(2) When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons.”

    1. It’s a rarity that such a request be appropriate. ‘Personal knowledge’ does not include common-knowledge or common-sense. The request is appropriate when an examiner is arguing something like “based on my experience as a X engineer, I know that Y has been used for…”.

      1. Interesting assertion. One would think that an Examiner’s assertion about what he knows to be true from personal knowledge would be more reliable than what an Examiner believes an entire group of people knew as common knowledge at the time of the invention.

        1. You mean “In[correct] assertion.” When Examiner asserts that something is common knowledge, that assertion is predicated upon the Examiner’s personal knowledge of the knowledge of others or upon some reference that could establish the truth of the assertion (and if there were a reference, surely that reference would have been provided). Thus, this assertion is still predicated on personal knowledge, just one layer removed.

          Ben’s response is typical of USPTO bureaucracy, in that it entirely misses the forest for the trees by ignoring the fundamental inequity that the rule is intended to address (and quite clearly does adderss) and resting on a procedural interpretation that contorts the intent of the rule severely.

          Using Ben’s example, if the Examiner made the identical statement “I know that Y has been used for…”, but simply removed the one aspect of the assertion that has some circumstantial weight (the clause “based on my experience as a X engineer”), Ben would ostensibly say that the assertion is simply “common knowledge” that can rest on its own. Silliness.

          1. When you’re done with that strawman you might take a moment to note that I never said anything about the common knowlede resting on its own. If applicant adequately traverses the noticed fact, the examiner has to either shut up or put up evidence.

            “If there were a reference, surely that reference would have been provided.”

            One would only say this if they didn’t actully understand what official notice is for.

            1. “One would only say this if they didn’t actully understand what official notice is for.”

              What is if for?

              “If applicant adequately traverses the noticed fact…”

              The problem with this is the bullsh!t in MPEP 2144.03, which has no legal authority, or basis whatsoever, but that examiners seem to think is actually the law. It’s not.

              Here’s a tip: If you’re taking Official Notice, you’re doing your job wrong. Stop it. Find a reference. If the “noticed fact” (lulzapalooza) is actually “capable of instant and unquestionable demonstration as being well-known,” then spend an “instant” and find a reference.

      2. Respectfully disagree. How does one know what is “common-knowledge”? Must a fact asserted as CK be accepted as true just because the Examiner says it is? What is or isn’t CK is itself a factual issue. An examiner’s assertion that X is CK is a form of personal knowledge; not of the underlying fact X, but rather of the fact that _X s common knowledge_.

        The Supreme Court caused this confusion by extolling the role of common knowledge. I think the Court’s purpose in bringing it up was to emphasize that the potential sources of information relevant to obviousness analysis should not be constrained.

    2. The times that I have challenged such “official notice” rejections, the Examiner has either dropped the allegation, or cited a document to support the assertion. I have never seen an example of the affidavit to which you refer.

    3. Have never seen this happen, though I have seen a case history that had one … sorry I can’t recall it. Have challenged personal-knowledge assertions many times. They always either go away or are replaced with real art, which is good for the Applicant, since how do you disprove personal knowledge? Modern 103 rejections usually blur the line between fact and reasoning. Teasing out the facts (including implicit assumptions) can help identify facts that are “personal knowledge”.

  6. As an examiner with prior prosecution experience, I hope this decision is integrated into the examining corps. There have been times when I allowed an application and was questioned why I didn’t make a 103. My response was that I couldn’t come up with a reason to combine them. To me, that means allow the application. To too many examiners, that means make up a rationale and hope it sticks.

    1. Why on earth would an examiner *want* to make up a rationale in the first place? I’ve been puzzled by this for a long time.

      If they themselves have ostensibly determined non-obviousness because there is no reason to combine the prior art, why on earth do they not *want* to assert their own rationally based finding of patentability?

      1. “Why on earth would an examiner *want* to make up a rationale in the first place? I’ve been puzzled by this for a long time.”

        A first class ticket on the RCE gravy train is one reason.

        Do you need more?

      2. If your examiner is a junior examiner, they are most likely just trying to reach the conclusion that the know they are expected to reach by the person who is actually signing the action.

        If your examiner is not a junior, they are likely trying to reach the conclusion that they sincerely feel is right. (Though that sincerity may be due to an anti-patent attitude).

        1. “If your examiner is a junior examiner, they are most likely just trying to reach the conclusion that the know they are expected to reach by the person who is actually signing the action.”

          And therein lies the problem. As I posted in the next topic, objectively is a skill that can be taught, and learned. When the junior examiner is examining the application and the mindset is, “I need to get this counted, and it’s easier to just reject everything because I know it will get signed no problem, so even though I think the claims are allowable, I’m just gonna write it up as a rejection” then the whole exercise is pointless. Literally every second you’ve spent on the case has been a waste of time. Your time. The applicants time. Everybody’s time. Stop it.

          Examine the application objectively. In other words, consider all of the evidence in favor of unpatentability, and all of the evidence in favor of patentability. If the objective analysis leads you to conclude that the claims, or some of the claims, are allowable, then “advocate” that position to whoever it is that has the authority to sign your action.

          Question for all of the examiners: If you’ve ever argued for the allowability of a claim and had some SPE, QAS, or other useless, know-nothing, do-nothing brain dead GS-15 say, “That’s obvious. Just cite In re Boilerplate” how many times have you ever pointed out that In re Boilerplate is not applicable to the claim, or at least asked “How is that case applicable?”?

          If the answer to that question is NEVER, you’re not doing your job. You may be gittin’ yo’ counters, but you’re not doing your job.

          Start doing your job.

    2. Under the EPC, there are claims which easily shrug off novelty attacks but which cannot withstand simple obviousness attacks under the EPO-PSA TSM regime. But there are others that struggle mightily with novelty but, once through that, have no difficulty whatsoever with any obviousness attacks one can put together. Every case depends on ist unique facts.

      Some patent systems encourage the false assumption that, if it’s barely novel, it must be obvious. Their statutory provisions and caselaw fail to flag up and cherish the very different (but complementary) functions of the novelty and obviousness provisions of the statute.

      1. I agree heartily with MaxDrei here.

        A running complaint here in the States is the anti-patent fervor that among other things spawned the “Reject-Reject-Reject” era and certainly flavors the star chamber antics such as the (once publicized quickly shut down) SAWS program – of which, the Office admitted to having several such clandestine programs.

        A mind like yours, MaxDrei, being open to understanding, surely must have picked up that understanding about the US system…

        1. the anti-patent fervor

          Such fervor! And the result of all this alleged “anti-patent” fervor? More patents being granted than ever before in the history of civilization.

          But, oh, the fervor!

    3. Many thanks for your honest and helpful intervention.

      As a European, the first question is whether the claimed features lead to a new or improved result from which a technical problem is derived. If not, then simply finding the claimed features in the prior art suffices. If so, then you need a reason to combine, and should show a healthy respect for the “entropy” of invention. Once you know the answer, you can dismiss all the mass of failed alternative proposals and concentrate on the 2 or 3 proposals that could have led to the invention. But the inconvenient truth is that they are assembled with hindsight and do not represent what the skilled person really knew before the invention was made.

    4. Many thanks for your honest and helpful intervention.

      As a European, the first question is whether the claimed features lead to a new or improved result from which a technical problem is derived. If not, then simply finding the claimed features in the prior art suffices. If so, then you need a reason to combine, and should show a healthy respect for the “entropy” of invention. Once you know the answer, you can dismiss all the mass of failed alternative proposals and concentrate on the 2 or 3 proposals that could have led to the invention. But the inconvenient truth is that they are assembled with hindsight and do not represent what the skilled person really knew before the invention was made.

      [Comment turned up in the wrong place – apologies]

  7. Important obviousness decision?

    It’s just explaining there needs to be a factual record for review beyond a single sentence. This is an APA decision.

    1. How is “common sense” proven with a factual record?

      Or put a different way, what exactly is “common sense” in relation to any type of “sense” that can otherwise be proven on a factual record?

      Is not “common sense” really just a buzzword for “everyone knows, so no facts on the record are needed”…?

      1. There is great deal of difference between stating something is common sense (as a bald assertion) and explaining why something makes common sense.

        When the establishment of something being common sense serves as evidence or the reason to conclude something else, a bald assertion of common sense without any explanation cannot serve as the explanation or evidence for a bald assertion of that something else.

        Simply dressing up a bald assertion into the costume of a reason to support something else cannot in fact form a logical basis for that something else.

      2. Sorry to break this up I forgot to add:

        Explaining why something makes common sense, i.e. stating facts which are evidence for the allegation that something is common sense (whatever those facts might be…) can support the allegation of common sense which forms the evidence or reason for the something else.

        1. Thanks Anon2, if I understand you, there is no such “proper evidence” of a mere claim of “common sense,” but there must be an underlying layer of factual support for the assertion of common sense.

          But that appears to beg the question: if you are establishing a factual record anyway, why bother with the assertion of common sense?

          1. The record need not only be used for what it explicitly states, it could be used for what it implicitly shows. This in combination with common sense accessible to everyone (accepted facts) could be used to argue the special “common sense” of PHOSITA.

            If the case involved tables for instance, suppose tables (special knowledge) are not normally known to adjudicators but that in general surfaces and gravity and rolling are known (really common sense…).

            If all the prior art showed tables each with a level top surface, and also depicted articles on the tables (apples, oranges, tall glasses), even if none of the prior art explicitly stated that the surface of the table was “preferably level to reduce rolling or toppling of articles placed on it”, I think it would be reasonable to draw the conclusion that it would be common sense to PHOSITA if the reasoning included:

            1. A brief analysis of surfaces, gravity, and toppling (an analysis of common sense/factual knowledge of common people) to support the conclusion that a table top indeed should be flat to reduce rolling/toppling, i.e. some evidence that the asserted knowledge is actually true.

            2. an analysis relying on common sense that PHOSITA do know basic physics, i.e. some evidence that PHOSITA should have known the knowledge.

            3. All the prior art of record (although not explicitly stating it) is consistent with PHOSITA knowing (as a kind of common sense) table tops should be flat, i.e. evidence on the record that is consistent with most or all PHOSITA having that knowledge.

            I think it would be unreasonable to require an explicit statement in the prior art to conclude that “tables preferably are level to reduce rolling or toppling of articles on its surface” is common sense to table engineers.

          2. As for why bother?

            Things which are “just common sense” at some level of knowledge, are rarely or simply never explicitly stated in works by those of that level of knowledge. I.e. often they will not be explicitly in the record.

            What EVERY PHOSITA knows is precisely what PHOSITA would leave out in any written work directed to his/her peers.

            1. What EVERY PHOSITA knows is precisely what PHOSITA would leave out in any written work directed to his/her peers.

              Not sure about that – seems to be far too broad of a statement, besides being self-defeating (since what something actually written IS taken to be that very thing that is known by PHOSITA, and known by PHOSITA is by definition the same thing as known by every PHOSITA).

              There is no such thing as a PHOSITA that is common to all (or any) different art units. Sure, items of knowledge may easily cross art units, but that is not the same as saying that there is a universal “common sense” level of PHOSITA that any particular art field’s own PHOSITA can “add in” when necessary.

              Further, all of this still seems to push “proving common sense” away from having factual support – which was the point in my initial question.

              You either need factual support or you do not. If you do need it, why bother at all with the assertion of common sense?

              If you don’t need it – then this decision is in direct odds with the Supreme Court’s view of “common sense.”

              1. Your point is very well taken, and common sense opens the door to arbitrary decisions, but that door has been opened already, SO if an adjudicator is to purport to rely on it, it should at least be reasoned.

                1. I guess one point that can be driven at is that “proof” of common sense is not possible.

                  The reasoning (and facts supporting that reasoning) may be items that lend themselves to “proof,” but again if you have those supporting items (and that proof), why bother even asserting “common sense”…? Just assert the underlying items.

                2. …and don’t even get started with the scrivening of the created out of thin air of the “PHOSITA’s level of creativity“…

                  That’s a sure reflection of what Congress explicitly sm@cked the Court about with the Court’s “Flash of Genius.”

  8. Is any reader with experience of the rigorous and formal TSM approach used by the EPO able to tell us whether, if the USPTO were also to follow that approach, it would tick all the boxes now set up by the Federal Circuit?

    I have in mind that the EPO TSM approach is ever so easy to teach to new PTO Examiners. That’s one reason it was devised, back in 1978. It’s notoriously more difficult though, to get it across to people who are already set in their obviousness ways.

    Another point: secret prior art. Would the outcome have been different if the case had been under the AIA definition of the prior art?

    1. I recall from discussions with the late George Szabo who was one of the founder members of the EPO Appeal Boards that the technical problem test evolved immediately after the EPO was established as a result of intensive discussions and studies carried out by the newly appointed members of the Appeal Boards in preparation for the expected flow of appeal cases, that they were determined to take advantage of the best features of all their national traditions, and that it is misleading to ascribe the features of the EPO approach to the traditions of any one country.

      1. Hear hear, Paul. Even today, the Supreme Courts of both Germany and the UK decline to follow the EPO’s Problem and Solution Approach. The EPO in 1978 certainly didn’t cadge it from one country or another.

  9. ” Extending that decion, the Federal Circuit ruled that the PTAB must (1) “articulate a reason why a PHOSITA would combine the prior art references”; (2) have an adequate evidentiary basis for that finding; and (3) provide a “satisfactory explanation” for the motivation finding that includes an express and “rational” connection with the evidence presented. ”

    Sound illegal to me.

    1. Sorry I’d forgotten to get back to you anon.

      Yes, generally I was agreeing in so far as your discussion above went where this pronouncement renders “common sense” superfluous since if you go ahead and establish it “by evidence” then it really isn’t all that much “common sense”, and it’s more “set forth in stone common advice”. Also, the word “must” seems too strong here, at least for cases where the 103 analysis is superbly simple, though it might be ok for the instant case (except for the common sense thing I just discussed above being included in the “must”).

      However, all that said, this might be an ok quote for the exact case before them at the time, where they might not have been dealing with common sense or other type of not strictly established by hard evidence rationale, and they might have been dealing with a case where the complexity of the analysis necessitates 3.

      Still, attorneytards might try to start quoting this in general, and that’s not necessarily a good thing as it might confuse some folks.

      1. Thanks for getting back 6.

        I have read your additional comments, but don’t see the “illegal”

        Plus, your comment here was well before my comments (your comment being the first here), so you could not have been “agreeing with me, but”

        Your statement of “sounds illegal to me” is the statement that is too strong (and is what I was looking for you to explicate).

        So let me ask again:

        Which part, and why, 6?

        1. “I have read your additional comments, but don’t see the “illegal””

          If common sense is superfluous as a rationale in a given written opinion then whatever they just spewed on the page is illegal as we know that common sense is not superfluous as the supremes noted already.

          “Plus, your comment here was well before my comments (your comment being the first here), so you could not have been “agreeing with me, but””

          I had already considered the same topic before you typed your comments. It’s not unpossible for me to think of something before you anon.

          “Your statement of “sounds illegal to me” is the statement that is too strong (and is what I was looking for you to explicate).”

          I’ll disagree and leave it at that. It did, indeed, sound illegal to me.

          1. You disagree and want to just use the label “illegal” and not provide any explication.

            I just cannot see anything from you but the label, and such comes across as an emotive statement, rather than one based on any reasoning of law or fact.

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