'Common Sense' Cannot Substitute For Record Evidence To Support Obviousness Rejections In Inter Partes Reexamination

In K/S HIMPP v. Hear-Wear Technologies, LLC, No. 13-1549 (Fed. Cir. May 27, 2014), the Federal Circuit affirmed the Board and held that it was correct to require record evidence to support a proposed obviousness rejection in an inter partes reexamination.

Hear-Wear Technologies, LLC ("Hear-Wear") is the owner of U.S. Patent No. 7,016,512 ("the '512 patent"), directed to a hearing aid. The claims-at-issue, dependent claims 3 and 9, recite a "plurality of prongs that provide a detachable mechanical and electrical connection" from the behind-the-ear audio processing module to the in-the-canal module of the hearing aid. Slip op. at 3.

During prosecution of the '512 patent, the examiner initially rejected these claims as known in the art and therefore obvious. However, Hear-Wear amended the independent claims and the examiner ultimately allowed all the claims. K/S HIMPP ("HIMPP") requested an inter partes reexamination of the '512 patent, which the PTO granted. HIMPP proposed an obviousness rejection that the Central Reexamination Unit ("CRU") examiner refused to adopt because HIMPP "failed to provide evidence in support of [its obviousness] contention." Id. Hear-Wear appealed to the Board, which then concluded 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 the assertion.'" Id. at 4 (citation omitted). HIMPP appealed to the Federal Circuit and contended that the Board erred in requiring record evidence to support the assertion that the features were known prior art elements.

We recognize that the Board has subject matter expertise, but 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. To hold otherwise would be to embark down a slippery slope which would permit the examining process to deviate from the well-established and time-honored requirement that rejections be supported by evidence." Slip op. at 8 (citing In re Zurko, 258 F.3d 1379, 1385-86 (Fed. Cir. 2001)). On appeal, the Federal Circuit affirmed the Board and held that record evidence was required to support a finding that structural elements were known prior art elements. The majority emphasized how this holding complied with the Supreme Court's decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398...