KSR Mandates Common Sense Approach that Makes Reexamination Claim Obvious

In re Translogic Technology, Inc., [2006-1192](October 12, 2007)[RADER, Mayer, Prost] The Federal Circuit affirmed the BPAI's decision affirming the rejection of U.S. Patent No. 5,162,666 in a Reexamination proceeding.
SIGNIFICANCE: KSR mandated consideration of common knowledge and common sense.
BRIEF: LOF: "Determination of obviousness under 35 U.S.C. § 103 is a legal conclusion based on underlying facts." Words of a claim are generally given their ordinary and customary meaning. The Federal Circuit found that one of the claims at issue provided context for construing the claim terms. The claim used the phrases "coupled to" and "coupled to receive". The Federal Circuit found that the former defines a connection, while the latter doe snot specify a particular connection. The Federal Circuit thus concluded that "coupled to receive" meant "capable of receiving". Having construed the claims, the Federal Circuit turned to obviousness, and applying the "common sense" approach of KSR to extend the use of customary knowledge in the obviousness equation. The Federal Circuit said that an obviousness analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court to take account of the inferences and creative steps that a person of ordinary skill in the art would employ. The Federal Circuit concluded that a person of ordinary skill in the art would have recognized the value of a know element, to modify the prior art. Thus the Federal Circuit affirmed BPAI that the claimed invention was obvious.