Relying on the POSITA in Patent Prosecution: Impact of General Knowledge on Patentability/Validity

In KSR Int’l Co. v. Teleflex Inc. (U.S. 2007), the Supreme Court emphasized the importance of the background knowledge of a POSITA when determining whether there would have been an apparent reason to modify prior art to arrive at the claimed invention. "A person of ordinary skill is also a person of ordinary creativity, not an automaton." KSR, 550 U.S. 398, 421 (U.S. 2007). The Court, however, did not answer how far reliance on a POSITA's general knowledge could go to determine the issue of obviousness of an invention.

There has been remarkably little discussion in the case law about this change. In CR Bard v. Medline Indus., 2021 U.S. App. LEXIS 24135 (Fed. Cir. Aug. 13, 2021), the Federal Circuit reprimanded the Board for treating the POSITA like an automaton and looking for “express” disclosures. The court reminded the Board that the obviousness analysis is not an anticipation analysis. Practitioners making obviousness arguments may find it useful to emphasize the post-KSR standard for a POSITA, perhaps arguing that a creative POSITA would understand a certain disclosure differently or would be reasonably motivated to combine or modify the prior art.

That said, practitioners are cautioned that relying solely on "common sense" may be insufficient if it is found to be conclusory and unsupported. Case law shows that examiners, the PTAB, and the district court may similarly not rely on conclusory "common sense." See, e.g., In re Lee, 277 F.3d 1338, 1342 (Fed. Cir. 2002); In re Zurko, 258 F.3d 1379 (Fed. Cir. 2001); Mintz v. Dietz & Watson Inc., 679 F.3d 1372, 1377 (Fed. Cir. 2012); Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2016). Thus, although a POSITA is creative, there still "must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR, 550 U.S. at 418. This may be a point of attack for practitioners facing an obviousness rejection or argument relying on common sense.

The Arendi line of cases provides some guidance as to when common sense as a source of POSITA's knowledge may be appropriate: to provide a known motivation to combine, not to supply a missing claim limitation; when the technology is straightforward; and not as a wholesale substitute for reasoned analysis and evidentiary support. The Federal Circuit in recent cases provided additional guidance on the use of common sense when evaluating obviousness.

Listen as our authoritative panel of patent attorneys examines recent cases where challenges were successful using knowledge of a POSITA to fill in disclosure as well as cases where the same attempt failed to work. The panel will discuss use of prior art/knowledge of POSITA and common sense to fill in gaps and will offer practice tips are provided for patent applicants facing these arguments.

1. Use of knowledge of POSITA to challenge patents/reject claims
   1. Cases when it has worked
   2. Cases when it has failed to work
2. Use of common sense to challenge patents/reject claims
   1. Cases when it has worked
   2. Cases when it has failed to work
3. Best practices for patent applicants

The panel will review these and other key questions:

• How can counsel support common sense arguments with analysis and evidence?
• What steps should counsel take to avoid conclusory common sense arguments?
• What guidance can be taken from the Federal Circuit's recent decisions?