In DSS Technology Management, the Federal Circuit provides some useful guidance that limits the USPTO's ability to rely on "ordinary creativity" when rejecting patent claims.

At issue in this case was whether Apple's attack on the patent was correct where the combination of prior art references failed to show one of the claimed features. The PTAB took the view that "ordinary creativity" could fill in the missing gaps in the prior art references. Of course, if left unchecked, this opening would allow the USPTO to reject virtually any claim, even if the prior art was missing claimed elements, by claiming (without evidence) that the missing element could simply be filled in by ordinary creativity. This nose of wax thus has a great potential for governmental abuse.

Fortunately, the Federal Circuit provided some much needed guidance. The opinion explains that the "Board’s invocation of 'ordinary creativity' is no different from the reference to 'common sense'.". This is extremely important as the case law regarding the use of "common sense" includes significant limitations. For example, as the Federal Circuit has stated, when the USPTO or a defendant relies on common sense, the reviewing court must make a "searching" inquiry into the reasoned basis that is used. In addition, there are three important caveats to relying on common sense (citations omitted) explained in the court's opinion:

First, common sense is typically invoked to provide a known motivation to combine, not to supply a missing claim limitation.
Second, common sense is used to fill in a missing limitation only when the limitation in question was unusually simple and the technology particularly straightforward.
Third, case law repeatedly warns that references to common sense — whether to supply a motivation to combine or a missing limitation — cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified.

In this case, the PTAB failed to meet these caveats and the PTAB's decision was reversed. So, when an examiner tries to fill gaps by relying on "ordinary creativity" or common sense, make sure that the examiner does not take any short-cuts that run afoul of the rules laid out here by the Federal Circuit.