Board Defines Role of “Common Sense” in Obviousness Arguments

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Despite news reports and blog entries to the contrary, all is not doom and gloom for Patent Owners in inter partes review proceedings.  In SDI Technologies, Inc. v. Bose Corporation, IPR2014-00346, the Board denied an obviousness argument that sought to fill gaps in a prima facie case of obviousness through the use of “common sense.”

Petitioner’s obviousness argument, relative to several of the challenged claims, relied solely on attorney arguments and “common sense” to provide one of the claimed elements.  Petitioner argued that mere common sense would have led one of skill in the art to modify the prior art to come up with the missing element.

The Board disagreed, noting that, while common sense may be used to show motivation to combine prior art references or reasons to modify the references, merely reciting the words “common sense,” without more, cannot establish a missing element from the prior art. Order at 18-19, citingMintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1377 (Fed. Cir. 2012). Given the lack of evidence or expert testimony to support its common sense argument, the Petitioner’s obviousness argument failed with respect to several challenged claims.

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