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Scope of appellate review limited only by common sense?

By Lawrence B. Ebert, Esq.

IN RE POD-NERS, L.L.C., an appeal of a re-exam result to the CAFC, is another case in which obviousness and KSR are mentioned.
The reasoning for obviousness was not so clear at the lower level, but the CAFC wrote:

In ruling that the claims would have been obvious, the Board did not explain its
conclusion in detail. It did, however, unequivocally hold the claims to be obvious, which
was a legal determination. See In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000). In
these circumstances, Securities & Exchange Commission v. Chenery Corp., 332 U.S.
194, 196-97 (1947), does not preclude us from affirming the Board on the ground we
have stated. Although Chenery generally requires an appellate court to review a
decision of an administrative agency on the grounds the agency gave for its decision,
this court has recognized that this rule does not necessarily apply in full force where the
agency decision was on a legal issue and did not involve any exercise of its expert
discretion. Grabis v. OPM, 424 F.3d 1265, 1270 (Fed. Cir. 2005); Koyo Seiko v. United
States, 95 F.3d 1094, 1101-02 (Fed. Cir. 1996). That is precisely this case.

Pod-ners becomes a common sense case:

In KSR, 550 U.S. at 421, the Supreme Court pointed out that ?rigid preventative
rules that deny fact finders recourse to common sense, however, are neither necessary
under our case law nor consistent with it.? To reject the Board?s obviousness ruling
here, would be to deny the Board that very ?recourse to common sense? that the
Supreme Court there warned against.

**On obviousness, see also

Meet the new obviousness, same as the old obviousness?

http://ipbiz.blogspot.com/2009/06/obviousness-sinks-pro-se-appellant-at.html

http://ipbiz.blogspot.com/2009/04/cafc-affirms-bpai-decision-in-kubin.html

Full post as published by IPBiz on July 11, 2009 (boomark / email).