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Volume XI, Number 301

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Obviousness Rejections Must Articulate Rationale To Support “Common Sense” Motivation To Combine References

IN RE VAN OS: Jan. 3, 2017. Before Newman (concurring in part and dissenting in part), Moore, and Wallach.

Takeaway

  • Obviousness findings grounded in “common sense” must contain explicit and clear reasoning providing some rational underpinning why common sense compels a finding of obviousness.

Procedural Posture

Marcel Van Os appealed PTAB’s affirmance of examiner’s rejection.  CAFC vacated and remanded.

Synopsis

  • Obviousness: The CAFC reversed the PTAB’s affirmance of an examiner’s rejection of claims as obvious over a combination of two prior art references, Hawkins and Gillespie. The obviousness analysis under KSR on whether there would have been a motivation to combine prior art elements gives credit to the common sense and creative skill of an artisan to combine the prior art references in the manner claimed. Obviousness findings grounded in “common sense” must contain and explicit and clear reasoning providing some rational underpinning why common sense compels a finding of obviousness. Neither the Board nor the examiner provided any reasoning or analysis to support finding a motivation to add Gillespie’s disclosure to Hawkins beyond stating it would have been an “intuitive way” to initiate Hawkins’ editing mode. The agency tribunal must make findings of relevant facts, and present its reasoning in sufficient detail that the court may conduct meaningful review of the agency action.

  • Newman (concurring in part and dissenting in part): Remand is not the appropriate remedy in examination appeals in which the PTO has not established unpatentability. The appropriate remedy is that the claims be allowed and the patent granted.

Copyright © 2021, Hunton Andrews Kurth LLP. All Rights Reserved.National Law Review, Volume VII, Number 26
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About this Author

Paul T. Qualey, Andrews Kurth, Software technologies Lawyer, Patent litigation Attorney
Partner

Paul has experience in a variety of areas of intellectual property law with a particular emphasis on patent litigation in trial and appellate courts and at the International Trade Commission. Paul has represented both plaintiffs and defendants in patent infringement cases involving a broad range of technologies in the software, telecommunications, automotive and construction industries. His clients have included Lenovo, Sony, GAF Materials Corp., and DaimlerChrysler, among others.

Paul has also prosecuted patent applications in the software,...

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Zaed Billah, Andrews Kurth Law Firm, Patent Litigation Attorney
Associate

Zaed has a decade of experience with patent litigation in U.S. District Courts and the U.S. International Trade Commission. He also has substantial experience with inter partes review proceedings in the U.S. Patent and Trademark Office and with appeals before the U.S. Court of Appeals for the Federal Circuit.

Zaed’s litigation responsibilities include taking and defending fact and expert depositions, writing motions and briefs, examining witnesses at trial, and preparing witnesses for deposition and trial. His recent litigations...

212-908-6125
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