common sense : CAFC Alert

KSR does not do away with the requirement that the Patent Office provide documentary evidence to show that structural elements of a claim were known in the art

| July 22, 2014

K/S HIMPP v. Hear-Wear Technologies, LLC

May 27, 2014

Panel: Lourie, Dyk and Wallach. Opinion by Lourie. Dissent by Dyk.


The Federal Circuit found that the Board of Patent Appeals and Interferences (“Board”) and the Examiner did not err during an inter partes reexamination of U.S. Patent No. 7,016,512 in refusing to accept a conclusory assertion from the third party requester that particular structural elements of claims 3 and 9 were known prior art elements in the absence of documentary evidence on the record because an assessment of basic knowledge and common sense as a replacement for documentary evidence for core factual findings lacks substantial evidence support. The Federal Circuit also found that the decision of the Board was not contrary to the holding in KSR.


This is an appeal from a decision of the Board in an inter partes reexamination affirming the reexamination Examiner’s decision not to reject claims 3 and 9 of U.S. Patent No. 7,016,512 (“’512 patent”) as obvious.

Claims 3 and 9 recite:

3. The at least partially in-the-canal module for a hearing aid of claim 2 wherein said insulated wiring portion is terminated by a plurality of prongs that provide a detachable mechanical and electrical connection to an audio processing module.

9. The hearing aid of claim 8 wherein said insulated wiring portion is terminated by a plurality of prongs that provide a detachable mechanical and electrical connection to said behind-the-ear module.

Hear-Wear is owner of the ‘512 patent. During prosecution of the application, the Examiner rejected claims 3 and 9 as obvious by concluding that “providing a plurality of prongs for the electrical connections or for the plugs is known in the art.” The Examiner did not take an Official Notice. Hear-Wear did not dispute the Examiner’s assertion of “known in the art”; instead, Hear-Wear amended independent claims and all claims were allowed.

The PTO granted a third party request by HIMPP for inter partes reexamination of the ‘512 patent. In its request for the inter partes reexamination, HIMPP did not submit documentary evidence to show that the features of claims 3 and 9 were “known in the art.” Relying on the statement by the Examiner during the prosecution of the application, HIMPP argued that claims 3 and 9 would have been obvious because “such detachable connections were known at the time of the alleged invention as concluded by the Examiner during prosecution” and the modification of the primary reference to include detachable connections for a signal cable “would have been no more than the predictable use of prior art elements according to their established functions.”

The reexamination Examiner did not agree with HIMPP’s position because HIMPP failed to provide documentary evidence in support of their position.  The Examiner maintained the patentability of claims 3 and 9. Hear-Wear appealed to the Board. The Board also disagreed with the  HIMPP position that the limitations of claims 3 and 9 were “well known” as HIMPP failed to point “to any portion of the record  for underlying factual support for the assertion. The Board stated that it was ‘not persuaded that the record before [it] adequately conveys that the particular distinct connection structures set forth in those claims are disclosed.’”

“The Board also found that during the original prosecution the Examiner never took official notice with respect to the ‘plurality of prongs’ feature of claims 3 and 9, and that there was no further indication that Hear-Wear acquiesced to the alleged position of official notice so as to qualify the limitations of the claims as admitted prior art.” Accordingly, the Board affirmed the Examiner. HIMPP timely appealed to the Federal Circuit.

The issue on appeal was whether the Board’s refusal to accept a conclusory assertion from HIMPP that particular structural elements of claims 3 and 9 were known prior art elements in the absence of documentary evidence on the record was contrary to the holding in KSR.

In KSR International Co. v. Teleflex Inc., “the Supreme Court criticized a rigid approach to determining obviousness based on the disclosures of individual prior art references that were already on the record, with little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications.”

The majority found that KSR was distinguishable from the instant case because the instant “case involves the lack of evidence of a specific claim limitation, whereas KSR related to the combinability of references where the claim limitations were in evidence.”

In view of the majority’s interpretation of the KSR, the majority found that “[t]he Board’s decision was correct because an assessment of basic knowledge and common sense as a replacement for documentary evidence for core factual findings lacks substantial evidence support.” Also, the majority found that “the Board’s holding is not inconsistent with KSR’s caution against the overemphasis on publications and patents for combining or modifying prior art that are already on the record.”

Also, the majority stated that the Board’s position is supported by the USPTO examination procedure as neither the Board nor the Examiner determined that the facts at issue met the standard justifying official notice.

“Although a patent examiner may rely on common knowledge to support a rejection, that is appropriate only in narrow circumstances. See M.P.E.P. § 2144.03 (“It would not be appropriate for the examiner to take official notice of facts without citing a prior art reference where the facts asserted to be well known are not capable of instant and unquestionable demonstration as being well-known.”)”

“If an examiner chooses to rely on personal knowledge to support the finding of what is known in the art, and the applicant adequately traverses that assertion, then the examiner must provide an affidavit or declaration setting forth specific factual statements and explanations to support that finding. 37 C.F.R. § 1.104(d)(2); M.P.E.P. § 2144.03(c).”

In the absence of any evidence on the record to support the HIMPP’s position that claims 3 and 9 were known prior art elements, the Federal Circuit affirmed the Board’s decision to refuse to adopt HIMPP’s obviousness contention.

In the dissent’s view the majority’s holding is inconsistent with the Supreme Court’s decision in KSR.  In the dissent’s view precluding the Patent Office from relying on their own common knowledge and common sense would significantly impair the agency’s ability to review applications adequately and undermines the purpose of the post-grant agency review.


As a general rule, the use of an Official Notice regarding structural elements to reject claims is improper. This is because the substantial evidence requires the Patent Office to provide a record that includes sufficient documentary evidence to enable judicial review; otherwise, as noted in this case by Judge Lourie, “‘basic knowledge” or ‘common sense’ as a replacement for documentary evidence for core factual findings in a determination of patentability” would “render the process of appellate review for substantial evidence on the record a meaningless exercise.” Notwithstanding, an Official Notice based on personal knowledge regarding structural features of a claim if not adequately traversed may render the noticed facts as admitted prior art. Therefore, always adequately traverse the Official Notice and ask the Examiner to produce documentary evidence or an affidavit. Also, in the absence of an Official Notice, the rejection based on the Examiner’s assertion that certain structural features are “know in the art” should also be traversed on the premise that a prima facie case is absent as necessary structural element is not shown.

Full Opinion

Did the CAFC Extrapolate From the Teachings of the References to Reach the Conclusion of Obviousness?

| August 12, 2013

In re Adler

July 18, 2013

Panel:  Prost, Reyna and Wallach.  Opinion by Wallach


The Examiner rejected all of the pending claims under 35 U.S.C. §103 as obvious over several prior art references, including International Patent Publication WO 00/22975 (“Meron”) in view of Masaru Hirata et al., Study of New Prognostic Factors of Esophageal Variceal Rupture By Use of Image Processing With a Video Endoscope, 116 Surgery 8–16 (1994) (“Hirata”).

The Board of Patent Appeals and Interferences (“the Board”) affirmed the Examiner’s rejection of all pending claims of U.S. Patent Application No. 10/097,096 (the ‘096 application) under 35 U.S.C. §103 as being obvious over a combination of prior art references.  Adler appealed the Board’s decision to the Court of Appeals for the Federal Circuit (CAFC).  The CAFC affirms holding that the Board did not err in rejecting the pending claims as obvious and did not rely on new grounds for rejection.

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CAFC defines “common sense” and warns against impermissible hindsight

| June 6, 2012

Mintz and Jif-Pak Manufacturing v. Dietz & Watson and Package Concepts and Materials

May 30, 2012

Rader, Newman, Dyk.  Opinion by Rader.


This case highlights the important point that obviousness cannot be established by vague and unsubstantiated reliance on “common sense.”  Rather, Judge Rader defines the term “common sense” as “knowledge so basic that it certainly lies within the skill set of an ordinary artisan.”  The CAFC also warns against hindsight due to defining the problem to be solved based on the solution found by the inventors.   Furthermore, the CAFC reminds us that when references from a secondary technical field are used in a rejection, the person of ordinary skill in the art is not a person familiar merely with this secondary technical field, but rather a person familiar with at least the primary technical field.

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KSR Reigned In For A Preliminary Injunction

| January 18, 2012

Celsis in Vitro, Inc. v Cellzdirect, Inc. and Invitrogen Corp.

January 9, 2012

Panel:  Rader, Gajarsa, and Prost.  Opinion by Rader; Dissent by Gajarsa.


While Rader’s majority opinion affirmed the district court’s grant of a preliminary injunction despite defendant’s obviousness challenge, Gajarsa’s dissenting opinion asserts that the majority’s decision disregards the Supreme Court’s KSR flexible guidelines regarding the finding of obviousness in the mere repetition of well-known techniques to achieve a desired result, and in the application of “obvious to try.”  Gajarsa’s dissent also notes that this is a preliminary injunction, and the standard is not whether defendant has shown obviousness by clear and convincing evidence, but rather, whether defendant has shown a “substantial question of invalidity” to defeat a preliminary injunction.  Perhaps, the strongest position for the majority opinion is its consideration of the showing of a “teaching away” in the record, as well as deference given to the district court’s determinations of credibility of the parties’ expert witnesses.

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