The University of New Hampshire Law Review
A Little Common Sense is a Dangerous Thing: The Inherent Inconsistency Between KSR and Current Official Notice Policy
[Excerpt] “The question of whether an invention is an obvious variation of existing technology is one that has troubled courts for decades. From its roots in nineteenth century case law to the recent Supreme Court decision KSR v. Teleflex, Inc., the doctrine of obviousness has waxed and waned—moving through a variety of judicially-created tests to a current state that is still far from perspicuous.
This paper will examine obviousness through a particular lens: the U.S. Patent and Trademark Office (“USPTO,” “PTO”) tool known as “official notice”—the practice of declaring a patent application’s claims unpatentable as obvious based on undocumented reasoning, such as the common sense or common knowledge of a person having ordinary skill in the art to which the application pertains. After KSR, using unsubstantiated common sense-based rationales for rejecting patent claims is considered a completely valid practice. However, a line of obviousness cases, including one from the United States Supreme Court, stands for the polar opposite position—that declaring a patent invalid as obvious without underlying prior art support does not comport with the standards of the Administrative Procedure Act. Unfortunately, this contradiction leaves patent practitioners and the federal district courts to reconcile diametrically opposed holdings, especially when a case involves official notice.
Part II of this paper will give a brief history of general obviousness jurisprudence up to the Supreme Court’s KSR decision in 2007. Next, Part III will introduce the reader to the obviousness inquiry through the eyes of a USPTO examiner by presenting a hypothetical patent application scenario and defining various terms of art. Part IV will introduce the concept of formal official notice at the USPTO, including an examination of the official agency guidelines for the practice, and will present a judicial history of official notice. Part V will return to KSR, presenting more recent Federal Circuit obviousness cases and introducing the problems that the current jurisprudence brings about. Finally, Part VI will conclude with potential solutions to the issue, arguing that the judiciary should hold the USPTO to task in providing evidence that an invention is in fact obvious.”
Eli M.Sheets, A Little Common Sense is a Dangerous Thing: The Inherent Inconsistency Between KSR and Current Official Notice Policy, 10 U.N.H. L. REV. 163 (2012), available at http://scholars.unh.edu/unh_lr/vol10/iss1/6