Since the SCOTUS decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the motivation to combine references no longer has to be found in the prior art, but may rely on the usage of common sense by one of skill in the art. However, in yesterday’s decision In re NuVasive (Fed. Cir. 2016), the US Federal Circuit has reinforced the notion that conclusory statements are not sufficient to justify a motivation to combine prior art references.

In this case, NuVasive appealed the final decision of the USPTO Patent Trial and Appeal Board

(“PTAB”), finding some claims of one its patents invalid as obvious. The Federal Circuit found that (1) a party, in this case the PTAB, must support the finding by a “reasoned explanation”; (2) it is not adequate to summarize and reject arguments without explaining why a party accepts the prevailing argument; and (3) although reliance on common sense may be appropriate in some circumstances, a party cannot rely solely on common knowledge or common sense to support its findings. A party must make the necessary findings and have an adequate “evidentiary basis for its findings.” Further, a party “must examine the relevant data and articulate a satisfactory

explanation for its action including a rational connection between the facts found and the choice made.”

The decision of the PTAB was vacated and remanded for additional PTAB findings and explanations regarding the motivation of the person of skill in the art to combine the prior art references.