Wednesday, May 25, 2005

Common sense in obviousness: Lee, 277 F.3d 1338

In their haste to prepare the amicus brief for KSR Inter. v. Teleflex, the twenty-four law professors left two entries for the one case, In re Lee, 277 F.3d 1338, 61 U.S.P.Q.2D 1430 (CAFC 2002), in the list of authorities.

To further the discussion of obviousness, we discuss the Lee case in a bit more detail than did the 24 professors.

This was a case about combining references in an obviousness rejection. In not requiring motivation to combine the references, the Board did not follow the law of the CAFC. From the case:

However, perhaps recognizing that the examiner had provided insufficient justification to support combining the Nortrup and Thunderchopper references, the Board held, as stated
supra, that a "specific hint or suggestion" of motivation to combine
was not required

Also at issue was the adequacy of the reasoning:

For judicial review to be meaningfully achieved within these
strictures, the agency tribunal must present a full and reasoned explanation of its decision. The agency tribunal must set forth its findings and the grounds thereof, as supported by the agency record, and explain its application of the
law to the found facts.

The concept of "common sense" appears in the decision:

The case on which the Board relies for its departure from precedent,
In re Bozek, 57 C.C.P.A. 713, 416 F.2d 1385, 163 U.S.P.Q. (BNA) 545 (CCPA 1969), indeed mentions "common knowledge and common sense," the CCPA stating that the phrase was used by the Solicitor to support the Board's conclusion of obviousness based on evidence in the prior art. Bozek did not hold that common knowledge and common sense are a substitute for evidence, but only that they may be applied to analysis of the evidence. Bozek did not hold that objective analysis, proper authority, and reasoned findings can be omitted from Board decisions. Nor does Bozek, after thirty-two years of isolation, outweigh the dozens of rulings of the Federal Circuit and the Court of Customs and Patent Appeals that determination of patentability must be based on evidence. This court has remarked, in Smiths Industries Medical Systems, Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1356, 51 U.S.P.Q.2D (BNA) 1415, 1421 (Fed. Cir.
1999), that Bozek's reference to common knowledge "does not in and of itself make it so" absent evidence of such knowledge.

The CAFC presented the heart of the problem:

Thus when they [examiner and Board] rely on what they assert to be general knowledge to negate patentability, that knowledge must be articulated and placed on the record. The failure to do so is
not consistent with either effective administrative procedure or
effective judicial review. The board cannot rely on conclusory statements when dealing with particular combinations of prior art and specific claims, but must set forth the rationale on which it relies.

Lee is cited in

Iron Grip Barbell v USA Sports, 392 F.3d 1317, 73 USPQ2d 1225 (CAFC 2004), district court's finding of obviousness affirmed. Iron Grip was NOT cited by the professors.

We turn first to a comparison between the prior art and the claimed
invention. In this inquiry, we are mindful of the repeated warnings of the Supreme Court and this court as to the danger of hindsight bias. See, e.g., Graham, 383 U.S. at 36 (consideration of secondary factors "serves to guard against slipping into use of hindsight and to resist the temptation to read into the prior art the teachings of the invention in issue" (internal quotations and
citations omitted)); In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000) ("The very ease with which the invention can be understood may prompt one to fall victim to the insidious effect of a hindsight syndrome wherein that which only the invention taught is used against its teacher." (internal quotations omitted)). We note in this respect that the district court's use of an
"overall picture" and "common sense" test of obviousness falls squarely into the hindsight trap. See In re Lee, 277 F.3d 1338, 1345 (Fed. Cir. 2002).

Dan Burk and Mark Lemley mention Lee in Biotechnology's Uncertainty Principle, 54 Case W. Res. 691 (2004):

For an extremely strict statement of the legal standard on
combining references, see In re Lee, 277 F.3d 1338 (Fed. Cir. 2002); Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340 (Fed. Cir. 2000).

Hall and Harhoff [19 Berkeley Tech. L.J. 989] also mention Lee:

A recent decision by the Court of Appeals for the Federal Circuit
creates still another reason for serious consideration of a nonjudicial process for post-issue validity challenges. In 2002, the Federal Circuit ruled that the USPTO had incorrectly rejected an application for obviousness, arguing that if an examiner rejects an application using "general knowledge," that knowledge
"must be articulated and placed on the record." n40

40. In re Lee, 277 F.3d 1338 (Fed. Cir. 2002). This decision
presumably makes it more difficult to reject such patents as U.S. Patent No. 6,368,227 (issued Apr. 9, 2002), the patent on a swinging method that uses a technique known by children for years, but not placed "on the record." This particular patent has been subject to a reexamination request of the U.S. Patent Commissioner, probably because of the publicity it received. NAS Study, supra note 3, at 39. The problem with patents like U.S. Patent No. 6,368,227 is not necessarily that they are enforceable in the courts, but that they clog the system and raise its total cost.

[The argument of Hall and Harhoff is silly. Lee was a case in which the CAFC reversed the Board. The CAFC would have the same authority to reverse the findings of the PTO in an opposition. An opposition procedure, contrary to Hall and Harhoff would not affect what was going on in Lee. Further, one notes that the "swing patent" was invalidated. Further, rejections of continuations of the sealed crustless sandwich of Smucker were also upheld. Proper evidence was presented.]


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