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Not So Common Sense? Reliance on Common Sense to Establish Obviousness, PTAB Litigation Blog

February 2018

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In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007), the Supreme Court stated that "common sense" can be considered in reaching a conclusion that a claimed invention is obvious. Since then, both litigants and patent examiners have often attempted to cite to common sense as a justification in combining two or prior art references. The Federal Circuit, however, has repeatedly explained that obviousness findings grounded in "common sense" must contain
"explicit and clear reasoning providing some rational underpinning why common sense compels a finding of obviousness." In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017) (internal citations omitted). Common sense "cannot be used as a wholesale substitute for reasoned analysis and evidentiary support." Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016).

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