During the proceeding, B/E also moved to exclude design drawings Zodiac attached to its petition showing a second recess, because Zodiac had not shown that the drawings were "patents" or "printed publications" as required by 35
B/E requested a rehearing. B/E challenged as improper the PTAB's reliance on "common sense" in finding obviousness and the PTAB's consideration of the design drawings. The PTAB denied the rehearing request, and B/E appealed.
The Federal Circuit affirmed the PTAB's obviousness determination under both the traditional and common sense approaches. The Court found that modifying the prior art to include a second recess was the predictable application of known technology. The Court also agreed that it would have been a matter of common sense to incorporate a second recess in the prior art. The Court rejected B/E's assertion that the PTAB relied on an unsupported assertion of common sense to supply a missing limitation in the prior art. Obviousness determinations may rely on common sense when accompanied by sufficient reasoning. The Court found that the PTAB's reliance on common sense was proper because it was accompanied by reasoned analysis and supported by detailed expert testimony. The simplicity of the technology also supported the use of common sense.
The Federal Circuit determined that it did not need to reach the issue of the design drawings because the PTAB's final obviousness determination was correct and did not rely on those drawings. The PTAB independently supported its obviousness conclusion based on Zodiac's argument and evidence, including expert testimony.
Practice Note: Common sense accompanied by appropriate reasoning can play a role in determining obviousness, particularly when the technology is simple. Parties seeking to rely on or challenge the use of common sense in an obviousness analysis should consider the strength of the arguments and evidentiary support, including expert testimony, for an assertion of common sense.
Originally published
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