In all honesty, given the state of the case law it is becoming very hard for me to advise clients to file patent applications on anything now. I’m getting cases allowed, but I don’t see any of them withstanding judicial scrutiny. Is anyone else struggling with this?

I’m with you. The Federal Circuit got the conclusion right, but using a horribly bad analytical approach. I’m not opposed to using “common sense” but in this context it needs to be supported by verifiable evidence of some sort. SCOTUS should be excoriated for what they said about using “common sense” in KSR International.

This case sends at least 2 really awful signals:

1. Suggesting that patent examiners may base obviousness rejections on “common sense” that isn’t supported by verifiable evidence. In commenting on the Lee case that “said omission of a relevant factor requireed by precedent is both legal error and arbitrart agency action,” Judge Linn’s opinion goes on to say: “However, this did not preclude examiners from employing common sense.” This is nothing more than a license to engage in unverifiable speculation by patent examiners. I can’t tell you how many times a patent examiner has said a missing claim feature or element is “well known in the art” or “inherent” in the reference relied upon. If that’s true, why is the patent examiner unable to factually support what is “well known” or “inherent.”

2. Allows judges to completely discount expert testimony when there is no other evidence to support what is and is not “common sense.” I’m completely aghast at the following statement:in this case that expert testimony was “not necessary in this case.” But there was no other “evidence” presented to support whether novel step (D) (which the alleged infringer conceded wasn’t taught by the art) was “common sense.” How can you suggest ignoring the only evidence facturally supporting why this step not taugth by the art is “common sense”?

“Common sense is the lazy man’s rationale for rejecting an application.”

Just Visiting,

Well stated. Mark my words, this case is going to be cited by the PTO for basing obviousness rejections on nothing more than unverifiable “common sense.” It’s hard to challenge a “phantom” and that’s exactly what this “common sense” is, a “phantom.”

I agree, the outcome would have been the same under the pre-KSR standard. The only difference is, before KSR, a rationally minded attorney would have said that Perfect Web had a decent argument given the lack of evidence related to the “repeating” step.

However, the Plaintiff’s own expert testified that the only two available options after step C would be to give up, or keep trying. “Giving up” doesn’t add to the prior art at all, so from a patentability perspective, there was really only one option. More detail here: http://www.ipnav.com/ipnav-blog/view/p/cry-cry-again/

The “common sense” dicta is problematic in that it can potentially be misinterpreted by district courts. I think a better framework for evaluating obviousness when it really is “common sense” is more factual inquiry into the specific knowledge that “one of ordinary skill” possesses. Simple statements like, “at least a high school diploma, one year of experience in the industry, and proficiency with computers and e-mail programs” do little to actually inform a jury of the level of skill in the art.

I would have preferred the district court to have made a factual finding (perhaps based on Perfect Web’s testimony) that the person of ordinary skill would have known to take additional step D because it is the only available option. I suspect the CAFC felt that reversing and instructing the district court to make this factual determination for the record would have simply wasted everyone’s time and money.

This post was mentioned on Twitter by ipwatchdog: CAFC Rules Patent Claims Obviously Common Sense – Perfect Web v. InfoUSA, repeating step is common sense under KSR. http://bit.ly/71RhMV...

The problem with KSR and it’s now ever-growing progeny, is that it ignored that the TSM test was not an “obviousness test” per se. Instead, it was an evidence test. It simply required that if you were going to make a conclusion on obviousness that you rely upon some evidence (i.e., the teaching, suggestion, or motivation) that is found in the prior art.

By ejecting that standard and relying upon the undefinable “common sense,” anybody can reject a claim for any reason whatsoever under the rubic of that one having ordinary skill in the art could have employed “common sense” to come up with the invention. Thus, who needs proof when one can rely upon common sense. Hindsight reconstruction …. a dead argument because the Examiner wasn’t relying upon hindsight reconstruction. Instead, the Examiner was relying upon common sense. The great thing about common sense is that how do you refute it? What proof can you supply to establish that a particular rationale would not have been considered common sense.

Common sense is the lazy man’s rationale for rejecting an application. Of course, the way the USPTO works where doing the least amount as possible while still making your production is the norm, this is going to be a favored argument among Examiners.

Welcome to the world of no evidence obviousness rejections. We saw that KSR opened the door for them, now the Federal Circuit has bought into it hook, line, and sinker.