Fed. Cir. affirms the Board’s determination of nonobviousness during a reexamination.  The claims related to a hearing aid with a specific connecting structure.  The Board correctly required record evidence that the connecting structure was a known prior art element.

K/S HIMPP v. Hear-Wear Techs., LLC, ___ F.3d ___ (Fed. Cir. May 27, 2014) (LOURIE, Dyk (dissenting), Wallach) (PTAB) (2 of 5 stars) 

As this was not a “peripheral issue,” the Board had to make a “core factual finding” that “require[d] more than a conclusory statement from either [the patentee] or the Board[,]” because using “an assessment of basic knowledge and common sense as a replacement for documentary evidence for core factual findings lacks substantial evidentiary support.”  Slip op. at 6-7.  KSR did not require a different result because “[i]n contradistinction to KSR, this case involves the lack of evidence of a specific claim limitation, whereasKSR related to the combinability of references where the claim limitations were in evidence.”  Id. at 7.  A conclusory statement based on basic knowledge or common sense cannot replace documentary evidence for core factual findings because “[t]o hold otherwise would be to embark down a slippery slope which would permit the examining process to deviate from the well-established and time-honored requirement that rejections be supported by evidence.”  Id. at 8.  Finally, the Fed Cir declined to take judicial notice of prior art supposedly showing the limitation, or “to expand the scope of our review beyond the grounds on which the Board actually relied.”  Id. at 9 (citing SEC v. Chenery).

Dissent:  Judge Dyk would have held that the claim limitation was known in the prior art:  “[e]very purchase of electrical devices in the United States for the past 50 years or more is familiar with multi-pronged electrical connections.”  Dissent at 4.  According to Judge Dyk, examiners are experts whose knowledge deserves deference, and the majority’s record evidence requirement is inconsistent with KSRand will adversely affect the examination process.