The PTO is required to produce factual evidence to show that a given limitation is known in the art. Although “an assessment of basic knowledge and common sense” may factor into the obviousness rationale for making a proposed combination of known elements, such assertions may not serve as “a replacement for documentary evidence for core factual findings.”
Background / Facts: The patent on appeal here from inter partes reexamination at the PTO is directed to a hearing aid device. With respect to certain dependent claims, the third party requestor asserted that these additional features “would have been no more than the predictable use of prior art elements according to their established functions,” in accordance with the obviousness standard established by the Supreme Court in KSR, but did not cite any particular factual evidence demonstrating that the additional features were well-known.
Issue(s): Whether assertions of “known in the art” can substitute for the factual evidence required to conclude that a structural element is a known prior art element.
Holding(s): No. “The requirement that evidence on the record is necessary to support [a claimed] limitation is not inconsistent with KSR’s caution against the ‘overemphasis on the importance of published articles and the explicit content of issued patents.’” In contrast to KSR, “the present case does not present a question whether the Board declined to consider the common sense that an ordinarily skilled artisan would have brought to bear when combining or modifying references,” but instead “whether the Board declined to accept a conclusory assertion from a third party about general knowledge in the art without evidence on the record, particularly where it is an important structural limitation that is not evidently and indisputably within the common knowledge of those skilled in the art.” Ultimately, “[t]he Board’s decision [declining to adopt the third party requestor’s proposed rejection] was correct because an assessment of basic knowledge and common sense as a replacement for documentary evidence for core factual findings lacks substantial evidence support.”