In KSR, the Court seemed to encourage the broader use of the “logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference” to resolve the obviousness question.  587 F.3d at 1324. In my opinion, this unleashed Examiners to reject claims as obvious if all or part of the invention “would have been no more than the predictable use of prior art elements according to their established functions.” (Another regular and maddening rejection is that the invention or part of it would be well within the ordinary skill of the art. Even the MPEP rejects this boilerplate as a ground for rejection. See Ex parte Levengood.)

The Board in a reexamination of a hearing aid patent obtained by Hear-Ware found the claims unobvious because HIMPP had not provided evidence that an element in two dependent claims (which seems to be just a plug in connector) were known ‘prior art’ elements.

To affirm the Board’s decision, a divided Fed. Cir. panel (Judge Lourie writing) distinguished KSR as involving the evidence required when ”combining or modifying references” to arrive at the claimed invention — which the majority indirectly called “peripheral issues” from the present case in which a “core factual finding” was at issue:

“Instead [of the KSR facts, this case] is about whether the Board declined to adopt a conclusory assertion from a third party [HIMPP] about general knowledge in the art without evidence on the record, particularly where it is an important structural limitation that is not evidently and indisputably within the common knowledge of those skilled in the art.” Slip op. at 7.

The panel went on to discuss PTO examination procedure in general, in effect reminding Examiners that reliance on common knowledge to support a rejection is appropriate only in narrow circumstances. The facts asserted to be well-known must be “capable of instant and unquestionable demonstration as being well-known.” Citing MPEP s. 2144.03. The panel stated that traversal of a rejection based on an Examiner’s personal knowledge can require that the Examiner provide a Rule 104 declaration containing facts and explanations to support his/her assertion of what is well known in the art.” Slip op. at 8. (When I have requested such declarations in the past, the Examiners have never provided them, but either searched a bit harder and/or shifted the bases of the rejections slightly.)

Not surprisingly, Judge Dyk’s dissent argued that the decision is inconsistent with KSR and has partly rebuilt the “rigid preventative rule that denies factfinders recourse to common sense”, thus impairing the ability of Examiners to “review applications properly.” As a practitioner, I respectfully dissent from this dissent but, ultimately the Fed. Cir. may find that this appeal was not the best start at constraining the reach of KSR.

K/S HIMMP v. Hear Wear Technologies, LLC, App. no. 2013-1549 (Fed. Cir., May 27, 2014).