This week the Federal Circuit issued a non-precedential opinion that provides some insight into what the court considers to be “common sense” in the context of patent application examination. In In re Vaidyanathan (no. 2009-1404, issued May 19, 2010), the Court explained when rejecting a claim as obvious, USPTO examiners and the Board of Patent Appeals and Interferences cannot simply assert that a combination is “common sense” in a conclusory manner. The Court also chided the USPTO for a record that provided several different interpretations of a single prior art reference.
In the case, the patent claims related to a method of guiding and controlling munitions such as missiles and unmanned aircraft. Claim 1 covered a method of controlling a munition using autopilot by, among other steps, processing certain information with a neural network to obtain a desired trajectory. The USPTO rejected claim 1 and other claims, and the Board affirmed the rejection, in view of various combinations of the prior art.
The applicant argued that one of the the cited references did not in fact teach a particular feature for which it was cited by the USPTO. In various Office Actions, the USPTO provided three different explanations of why the reference taught that feature. The Federal Circuit found the Examiner’s contradictory positions to be troubling, stating:
[T]he PTO has now provided a third explanation of why Biggers teaches the input of trajectory commands . . . . This third retooling of the PTO position, without additional development of the record, casts serious doubt upon the support for any set of findings relating to the teachings of Biggers. . . . [T]he agency’s contradictory findings of technological facts based on shifting perceptions of the prior art impeach the deference normally owed to administrative findings of fact.
The court thus remanded the case for further development of the record.
The Court also found fault with the Examiner’s and the Board’s explanation of an obviousness rejection. The Board’s decision stated:
To combine the feature of a neural network for determining the optimal trajectory as taught by Biggers with the missile guidance system of Johnson to attain the advantages of each would have been obvious to a person of ordinary skill in the art, as this would involve nothing more than the predictable use of prior art elements.
The court found this explanation to be lacking:
Obviousness is determined as a matter of foresight, not hindsight. . . . KSR did not free the PTO’s examination process from explaining its reasoning. In making an obviousness rejection, the examiner should not rely on conclusory statements that a particular feature of the invention would have been obvious or was well known. Instead, the examiner should elaborate, discussing the evidence or reasoning that leads the examiner to such a conclusion. . . . If it is not possible for the examiner to provide this type of information, the examiner might choose instead to provide an affidavit detailing the examiner’s own personal knowledge (as a person approximating one of ordinary skill in the art) of the technology in question. . . . Where, as here, prior art references are cited to support an obviousness rejection . . . the examiner should at least explain the logic or common sense that leads the examiner to believe the claim would have been obvious. Anything less than this results in a record that is insulated from meaningful appellate review. . . . If the examiner is able to render a claim obvious simply by saying it is so, neither the Board nor this court is capable of reviewing that determination.
Although the case is non-precedential, it may be useful when a prosecuting attorney or agent is rebutting a rejection based on obviousness. Perhaps we will see more guidance on post-KSR “common sense” from the Federal Circuit in the near future.