PTAB Reversed–Common Sense Improperly Used to Supply Missing Limitation in Obviousness Inquiry

10311096 - rejected stamp isolated on white backgroundIn a rare rebuke of the PTAB’s discretion, the Federal Circuit has outright reversed a finding of obviousness based on the Board’s misapplication of the law on the permissible use of “common sense” in an obviousness analysis.  The case, Arendi S.A.R.L. v. Apple Inc., Google Inc., and Motorola Mobility LLC (Aug. 10, 2016) involved a patent for providing coordination between a first computer program displaying a document and a second computer program for searching an external information source.  The invention allows a user to access and conduct a search using the second program while remaining in the first program; for example, a user using a data entry program can search a separate database for data in a certain field.  The limitation at issue was:  “performing a search using at least part of the first information as a search term in order to find the second information, of a specific type or types, associated with the search term in an information source external to the document, wherein the specific type or types of second information is dependent at least in part on the type or types of the first information.

The prior art involved a program that recognizes a phone number as a class of text.  The question on appeal was whether the Board erred in finding it would have been “common sense” to a person of ordinary skill in the art to search for the telephone number that is detected when the prior art’s “Add to address book” option is selected.

The Court found there was insufficient evidence to support such a resort to “common sense” here.  In doing so, the Court offered the reminder that when “common sense” is used to supply a missing limitation (as opposed to the more common use of providing a motivation to combine references), “it must…be supported by evidence and a reasoned explanation.”  Id. at 12. According to the Court, this was particularly so where, as here, the subject limitation was an important structural limitation that is not evidently and indisputably within the common knowledge of those skilled in the art.  In doing so, the Court distinguished precedent where “common sense” is used to supply a “peripheral” limitation in a claim.

In Arendi, the Court ultimately determined the challenger’s arguments were not specific enough to explain why the person of ordinary skill in the art would have found the subject limitation obvious.  As a result, the Court reversed the cancellation of the claims.