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Federal Circuit Holds Common Sense Cannot Establish Presence of an Element

June 13, 2014
Post by Blog Staff

The Federal Circuit's recent decision in K/S HIMPP v. Hear-Wear Technologies presents an interesting development in the law of obviousness. In affirming a finding of non-obviousness by the PTO Board of Patent Appeals and Interferences ("BPAI"), the Federal Circuit held that while common sense or basic knowledge may provide a reason to combine elements present in the prior art, it cannot establish the presence of an element itself.

Hear-Wear Technologies ("Hear-Wear") owns U.S. Patent No. 7,016,512 ("the '512 patent"), relating to a hearing aid that has three components. The components that make up the hearing aid are a behind the ear audio processing module, an in-the-canal module, and a connector between the two. Initially, during prosecution, the examiner rejected dependent claims 3 and 9 for obviousness, but ultimately allowed all claims.

K/S HIMPP ("HIMPP") filed an inter partes re-examination of the '512 patent, arguing that claims 3 and 9 were obvious for the same reasons supplied by the Examiner during the original prosecution. The re-examination examiner rejected HIMPP's arguments due to lack of evidence and ultimately maintained the patentability of claims 3 and 9. HIMPP appealed the examiner's decision to the BPAI, which found that although HIMPP argued that the content of claims 3 and 9 was “well known,” HIMPP failed to direct the Board to any portion of the record for underlying factual support for its arguments for obviousness, and therefore affirmed the Examiner.

On appeal to the Federal Circuit, HIMPP argued that the detachable connection was already known, and that adding the detachable connection was a natural combination of prior art. The majority of the panel (Judges Lourie and Wallach) affirmed the BPAI, holding that record evidence was required to support an assertion that the structural features of claims 3 and 9 of the ’512 patent were known prior art elements. Because HIMPP did not provide any evidence, and the Board cannot accept general conclusions about what is “basic knowledge” or “common sense” as a replacement for documentary evidence for core factual findings in a determination of patentability, there was no support for HIMPP's position.


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