NOTE: This opinion is nonprecedential. 

United States Court of Appeals 

for the Federal Circuit 

__________________________ 

IN RE CLAUDE NOUVEL 

__________________________ 

2011-1526 

__________________________ 

Appeal from the United States Patent and Trademark 

Office, Board of Patent Appeals and Interferences in 

Serial No. 11/785,758. 

___________________________ 

Decided: August 29, 2012 

___________________________ 

BENJAMIN L. KIERSZ, Pillsbury Winthrop Shaw 

Pittman, LLP, of McLean, Virginia, argued for appellant. 

With him on the brief was JACK S. BARUFKA. 

JOSEPH G. PICCOLO, Associate Solicitor, Office of the 

Solicitor, United States Patent and Trademark Office, of 

Alexandria, Virginia. With him on the brief were 

RAYMOND T. CHEN, Solicitor, and SYDNEY O. JOHNSON, JR.,

Associate Solicitor. 

__________________________ 

Before NEWMAN, CLEVENGER, and BRYSON, Circuit 

Judges. 
IN RE NOUVEL 2

Opinion for the court filed by Circuit Judge CLEVENGER. 

Dissenting opinion filed by Circuit Judge BRYSON. 

CLEVENGER, Circuit Judge. 

Claude Nouvel (“Nouvel”) appeals the decision of the 

United States Patent and Trademark Office Board of 

Patent Appeals and Interferences (“Board”) affirming the 

examiner’s rejection of claims 1–19 of U.S. Pat. App. No. 

11/785,758 (filed Apr. 19, 2007) (“the ’758 application”) as 

obvious in view of U.S. Patent No. 6,019,020 (issued Feb. 

1, 2000) (“Liou”) and U.S. Patent No. RE4,917 (reissued 

May 28, 1872) (“Herbert”). We vacate and remand for 

further proceedings. 

I 

Nouvel’s ’758 application is a broadening reissue application of U.S. Patent No. 6,880,434 (issued Apr. 19, 

2005) (“the ’434 patent”). Claims 1–10 of the ’758 application were reproduced without amendment from the ’434 

patent, whereas claims 11–26 of the ’758 application were 

added during reissue examination. Both the reissue 

application and the original patent claim adjustable 

“transversely retained multiple slip-joint pliers” capable 

of gripping differently-sized objects by shifting the pliers’ 

two arms relative to one another and locking them in 

place. Each arm of Nouvel’s pliers comprises a jaw, a 

handle, and an intermediate “articulation region.” ’758 

application claim 1. When the tool is assembled, the 

articulation region of Nouvel’s second arm fits into a 

depression carved into the articulation region of Nouvel’s 

first arm, and a metal plate holds the two arms together. 

Nouvel’s metal plate 4, when viewed laterally, has a 

general Ω, or “Omega,” shape. See id. fig. 6. The ends of 

Nouvel’s metal plate are riveted to the first arm, and the 
3 IN RE NOUVEL

middle portion of the metal plate curves away from the 

first arm creating a space through which the second arm 

is disposed: 

Id. figs. 1 & 6. Claim 1, reproduced below, is illustrative 

of the claimed subject matter: 

1. Interengaged multigrip pliers comprising: 

an interengaging arm having a first jaw, a first 

intermediate articulation region, and a first handle, the first intermediate articulation region defining a depression, and a step on either side of 

the depression; 
IN RE NOUVEL 4

an interengaged arm having a second jaw, a second intermediate articulation region, and a second 

handle, the second articulation region being received so as to be movable in rotation, and selectively in translation, in the depression; and 

a plate for holding the second articulation region 

in the depression, ends of the plate being positioned on the steps, respectively, 

wherein the plate has an outer generally Ω shape 

when viewed from a side thereof. 

Id. claim 1. 

The examiner rejected claims 1–19, at issue in this 

appeal, as obvious in view of Liou combined with Herbert. 

Liou claims adjustable pliers having a first arm 10 riveted 

to a restraining panel 30 (i.e., a metal plate). A recess 14 

carved into first arm 10 creates a space through which a 

second arm 20 is threaded and held in place by restraining panel 30. The examiner asserted, and Nouvel has not 

disputed, that Liou teaches all elements of Nouvel’s 

claims with the exception of the Omega-shaped metal 

plate. Instead, Liou’s figures depict restraining panel 30 

as visibly flat rather than Omega-shaped. See Liou fig. 2. 

A flat plate can overlie both of Liou’s arms, according to 

the examiner, because recess 14 is no deeper than the 

thickness of arm 20 and so the two arms lie flush when 

the tool is assembled: 
5 IN RE NOUVEL

Id.

The examiner’s other cited reference was an 1872 patent to Herbert for a particular type of adjustable pipe 

wrench. Herbert’s wrench does not employ a metal plate; 

instead, Herbert’s arm A rests in a depression carved into 

arm B and the two are fastened together using a bolt and 

a nut. The novel aspect of Herbert’s pipe wrench is a “bit” 

or “tooth” disposed within the wrench’s jaws for carving a 

groove as the wrench is rotated around a pipe. The 

examiner cited Herbert not because of this “tooth,” but 

because the embodiments shown in Herbert’s figures 1 

and 2 depict the wrench having an arm A that is noticeably thicker than the depression carved into arm B. Consequently, unlike Liou’s pliers, Herbert’s wrench has two 

arms which do not lie flush together when the tool is fully 

assembled: 
IN RE NOUVEL 6

Herbert figs.1 & 2. 

II 

To judge the correctness of the Board's rejection of 

Nouvel's patent for obviousness, the prosecution of the 

patent must be understood. In the first office action, the 

examiner allowed claims 1–10, but rejected claims 11–12. 

Nouvel amended claims 11–12 and introduced claims 13–

26. 

In the second office action, the examiner rejected all of 

the claims, noting that Liou meets all the limitations of 

claims 1 and 13 except for the plate having an outer 

generally Omega shape when viewed from the side. The 

examiner observed that Herbert's pliers depict an arm A 

noticeably thicker than the depression in which it sits. 

From that observation, the examiner posited that Liou’s 
7 IN RE NOUVEL

second arm 20 could be thickened. According to the 

examiner, such thickening would impart higher strength 

and structural integrity to the pliers. The examiner then 

opined that if the thickening process were implemented, it 

"would have been obvious to one of ordinary skill in the 

art, at the time the invention was made, to modify the 

invention of Liou with an Omega-shaped plate to accommodate a second arm having thicker dimension." The 

examiner did not explain why one of ordinary skill in the 

art would have modified only one arm of Liou’s pliers to 

impart greater strength and structural integrity. 

The applicant responded arguing that Herbert did not 

teach an Omega-shaped plate. The examiner was unmoved. Conceding that Herbert did not teach an Omegashaped plate, the examiner argued that Herbert is otherwise relevant because it shows that the arm received in 

the depression (arm A in Herbert; arm 20 in Liou) is 

thicker than the space defined by the other arm, and thus 

extends out of the depression. Again, citing purported 

greater strength and structural integrity, the examiner 

concluded that it would have been obvious to thicken arm 

20 of Liou, and accordingly produce the need to convert 

Liou's flat plate to an Omega-shaped plate. 

At no point in the office actions did the examiner rely 

on any notion that common sense would spur one of 

ordinary skill to modify Liou by thickening arm 20. 

Instead, the examiner repeatedly asserted that Herbert’s 

teaching would motivate one of ordinary skill in the art to 

improve the strength and structural integrity of the pliers 

by thickening only one arm of the pliers, the arm that sits 

in the depression of the other arm. 

The applicant then proceeded with his appeal to the 

Board, directly challenging the examiner’s rationale. The 
IN RE NOUVEL 8

applicant questioned why an ordinary artisan would have 

thickened only Liou’s second arm 20 when Liou teaches a 

flat plate that only works if the thickness of arm 20 is the 

same as the depth of the depression 14 in the first arm 10. 

Nothing in Herbert, the applicant contended, would lead 

an artisan to so modify Liou’s design. Thus, the applicant 

argued that one of ordinary skill in the art would not be 

motivated to thicken only one arm of Liou’s pliers; instead 

he would be motivated to thicken all related structures 

proportionally, which would not result in any change to 

Liou’s flat plate. With no apparent reason to thicken only 

one arm of Liou’s pliers, the applicant asserted that 

impermissible hindsight motivated the examiner’s conclusion. 

The examiner responded to the applicant’s appeal. 

The examiner did not dispute that Liou teaches that the 

depression 14 should be as deep as the mating arm 20 is 

thick. Instead, the examiner argued that Herbert “suggests” pliers having channels with a depth that is less 

than the thickness of the mating arm. From that suggestion, the examiner shifted gears from the previous position that one of ordinary skill would thicken the second 

arm 20 to strengthen the structural integrity. On brief to 

the Board, the examiner said the ordinary artisan would 

have modified the first arm 10, whose depression 14 

presumably weakened arm 10 relative to arm 20, to 

“avoid unduly weakening the first arm.” The examiner 

did not explain this change of heart, moving from a suggested thickening of second arm 20 (as stated in the office 

actions) to a suggested beefing up of presumably weaker 

first arm 10. The examiner responded to the hindsight 

challenge by noting that “any judgment on obviousness is 

in a sense necessarily a reconstruction based on hindsight 

reasoning.” The examiner did not rely on common sense 

to support the conclusion that the claims fail section 103. 
9 IN RE NOUVEL

The applicant filed a brief in reply to the examiner’s 

brief. He pointed out that the examiner agreed that Liou 

teaches that the depression 14 has the same depth as the 

second arm 20 connected to the first arm 10, and that 

Herbert teaches nothing about the association between 

the thickness of one arm of the pliers and the depth of a 

mating depression in the other arm. 

The Board affirmed the examiner’s rejection. Ex parte 

Nouvel, No. 2011-005007, 2011 WL 1806469, at *3 

(B.P.A.I. May 9, 2011). The Board’s decision recited that 

the prior art recognizes both a flush arm configuration 

(one, like Liou, in which an intermediate articulation 

region of one arm has a thickness substantially equal to 

the depth of the recess in the intermediate articulation 

region of the other arm), and a raised or offset arm configuration (one, like Herbert, in which the intermediate 

articulation region of the one arm exceeds the depth of the 

recess in the intermediate articulation region of the other 

arm). The Board expressly noted that neither Liou nor 

Herbert attribute any significance to the depth of the 

recess relative to the thickness of the intermediate articulation region of the other arm. The Board then turned to 

the issue of thickening one of Liou’s arms. Without 

explanation, the Board paid no attention to the proposal, 

introduced in the examiner’s brief to the Board, that one 

of ordinary skill would be motivated to increase the 

strength of arm 10, instead of arm 20 as the examiner 

originally proposed. Having accepted that nothing in the 

prior art taught any significant reason for increasing the 

size (and presumably the strength) of only one arm of 

pliers, the Board asserted that doing so would involve 

“only a rudimentary understanding of mechanics” and “is 

a simple matter of common sense.” Finally, the Board 

concluded that modifying Liou’s panel 30 to accommodate 

the thickening of one arm of the pliers with an Omega-
IN RE NOUVEL 10

shaped plate “would involve only ordinary creativity, and 

would not be challenging to a person of ordinary skill in 

the art.” 

The Board also ignored Liou’s teaching of equal thickness of the two arms and rejected the applicant’s assertion that one of ordinary skill setting about to strengthen 

the pliers would strengthen both arms, not simply one 

arm. According to the Board, but without explanation, 

Nouvel’s view that both arms would need to be thickened 

to increase strength “incorrectly presumes that a person 

of ordinary skill in the art is a mere automaton, not a 

person of ordinary creativity.” 

As noted above, the Board rejected the examiner’s 

proposal that one of ordinary skill in the art might have 

been motivated to strengthen the relative weaker arm of 

Liou, and having done so would have necessitated modification of the flat plate by an Omega configuration. But in 

sustaining the examiner’s obviousness determination, the 

Board introduced the ground that common sense (rather 

than Herbert’s teaching) would have driven one of ordinary skill to modify Liou as originally proposed by the 

examiner. Indeed, we read the Board’s conclusion of 

obviousness to rest on its view that only rudimentary 

skills are necessary to thicken an arm of the pliers and to 

modify a flat plate to an Omega configuration, and common sense supplies the reason to thicken arm 20 of Liou’s 

pliers. Our reading is compelled because the Board itself 

eschewed any reliance on Herbert to direct an ordinary 

artisan to address the depth of the recess in one arm 

relative to the thickness of the intermediate articulation 

region of the other arm. In other words, the Board used 

common sense, not teachings from prior art, to support 

modification of Liou’s arm 20. As noted above, a common 

sense explanation for modifying one arm of the pliers was 
11 IN RE NOUVEL

not advanced by the examiner at any stage in the proceedings. 

Nouvel timely appealed the Board’s final decision that 

the claims in suit are obvious. We have jurisdiction under 

28 U.S.C. § 1295(a)(4)(A). 

III 

This court reviews the Board’s determination of obviousness de novo and the Board’s factual findings for 

substantial evidence. In re Gartside, 203 F.3d 1305, 1316 

(Fed. Cir. 2000). Substantial evidence is “such relevant 

evidence as a reasonable mind might accept as adequate 

to support a conclusion.” Consol. Edison Co. v. N.L.R.B., 

305 U.S. 197, 229, 59 S.Ct. 206, 83 L.Ed. 126 (1938). The 

Board’s judgment must be reviewed on the grounds upon 

which the Board actually relied. See Sec. & Exch. 

Comm’n v. Chenery Corp., 332 U.S. 194, 196, 67 S.Ct. 

1575, 91 L.Ed. 1995 (1947); In re Sang-su Lee, 277 F.3d 

1338, 1345-46 (Fed. Cir. 2002). Alternative grounds 

supporting the Board’s decision are not considered. See

id. at 1346. “The [Board] must set forth its findings and 

the grounds thereof, as supported by the agency record, 

and explain its application of the law to the found facts.” 

Id. at 1342. Whether the Board relied on a new ground 

for rejection is a legal question that we review de novo. 

See In re Pacer Tech., 338 F.3d 1348, 1349 (Fed. Cir. 

2003). 

IV 

Nouvel’s appeal takes dead aim on the Board’s conclusion that one of ordinary skill in the art would have been 

prompted by common sense to modify Liou by thickening 

the second arm at the joinder of the first arm. Faced with 
IN RE NOUVEL 12

the opportunity to challenge the Board’s common sense 

ground for the first time here on appeal, Nouvel in essence calls the Board’s reasoning nonsense. To start, 

Nouvel notes that even the Board granted that nothing in 

the prior art relied on by the examiner suggests a reason 

to change the thickness of Liou’s second arm. Indeed, 

Nouvel argues that thickening Liou’s arm 20 confers no 

net benefit and in fact has considerable downside. Nouvel’s artisan would never thicken only one arm of a twoarmed tool, because doing so would not strengthen the 

tool’s overall gripping power. Rather, the artisan would 

recognize that just as “a chain is only as strong as its 

weakest link,” a pair of two-armed pliers is only as strong 

as its weakest arm. Because gripping forces are distributed equally between both arms of a pair of pliers, Nouvel 

contends that a tool having one stronger and one weaker 

arm is no stronger than a tool having two weaker arms. 

Thickening only one of Liou’s arms, Nouvel argues, would 

only add undesirable weight and material cost to Liou’s 

pliers without actually strengthening them, and so the 

Board’s approach would be contrary to a skilled artisan’s 

goals. Nouvel reasons that the only commonsensical way 

to thicken and thereby strengthen Liou’s pliers would be 

to enlarge both arms 10 and 20 proportionally. But this 

approach would not only thicken arm 20, but also increase 

the depth of the recess 14 carved into Liou’s arm 10, thus 

retaining Liou’s “flush-arm” configuration and eliminating any need to reshape Liou’s flat panel 30. 

Nouvel thus argues that common sense cannot serve 

as the rationale for obviousness in this case. Further, 

Nouvel asserts the Board should also be reversed because 

substantial evidence does not support the finding that one 

of ordinary skill in the art would be led by Herbert to 

increase the thickness of Liou’s arm 20, in order to create 

the need for an artisan to conduct the ordinary step of 
13 IN RE NOUVEL

converting Liou’s flat plate 30 to an Omega configuration. 

At the very least, Nouvel requests a remand to the Board 

on the ground that the Board’s common sense rationale 

was introduced as a new ground for rejection without 

giving Nouvel an opportunity to respond. 

V 

Obviousness analysis permits an examiner to rely 

upon “common sense” or the knowledge of the skilled 

artisan to bridge gaps in prior art’s explicit teachings. 

KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 420-21, 127 

S.Ct. 1727, 167 L.Ed.2d 705 (2007) (“Common sense 

teaches ... that familiar items may have obvious uses 

beyond their primary purposes, and in many cases a 

person of ordinary skill will be able to fit the teachings of 

multiple patents together like pieces of a puzzle.”). We 

have long held that an examiner’s reasoning “may include 

recourse to logic, judgment, and common sense available 

to a person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” See

Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 

1328-29 (Fed. Cir. 2009); In re Bozek, 416 F.2d 1385, 1390 

(CCPA 1969) (an examiner may rely upon "common 

knowledge and common sense of the person of ordinary 

skill in the art without any specific hint or suggestion in a 

particular reference"). But “the mere recitation of the 

words ‘common sense’ without any support adds nothing 

to the obviousness equation.” Mintz v. Dietz & Watson, 

679 F.3d 1372, 1377 (Fed. Cir. 2012). Thus, we have 

required that rejections grounded in “common sense” 

must contain explicit and clear reasoning providing some 

rational underpinning why common sense compels a 

finding of obviousness. See KSR, 550 U.S. at 418; In re 

Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on 

obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated 
IN RE NOUVEL 14

reasoning with some rational underpinning to support the 

legal conclusion of obviousness.”). 

To this end, the Board regularly reverses obviousness 

rejections when an examiner’s “common sense” reasoning 

is insufficiently supported by a rational underpinning. 

See, e.g., Ex parte Graham, No. 2010-009680, 2011 WL 

478699, at *4 (B.P.A.I. Feb. 8, 2011); Ex parte Ito, No. 

2009-008457, 2010 WL 4378372, at *3-4 (B.P.A.I. Nov. 3, 

2010); Ex parte Khoo, No. 2009-003966, 2010 WL 674312, 

at *3-4 (B.P.A.I. Feb. 24, 2010); Ex parte Zhang, No. 2009-

003920, 2009 WL 2978842, at *4-5 (B.P.A.I. Sept. 17, 

2009). 

These cases demonstrate that the Board can be vigilant in policing the use of common sense by examiners in 

making obviousness rejections, and they reflect the 

Board’s view of proper application of the common sense 

test. Each of the cases explains that common sense is not 

a hovering omnipresence. Instead, there must be an 

articulated rational reason why the common sense of an 

ordinary artisan would be awakened to modify prior art in 

such a way as to lead to an obviousness rejection. 

VI 

The Director’s brief to this court betrays the weakness 

in his case. First, the Director frames the question before 

us as “in view of these prior art references [Liou and 

Herbert], a skilled artisan who makes pliers would be 

exercising only ordinary skill to make pliers having two 

arms held together by a step connector.” But this is not 

the question. Nouvel does not doubt that an ordinary 

artisan knows how to thicken (or thin down) a piece of 

metal, or that an ordinary artisan, faced with a non-flush 

configuration (such as Herbert) would know a number of 
15 IN RE NOUVEL

different ways to connect the arms of the pliers, including 

with an Omega-shaped connector. The question before 

us, as it was before the Board, is why one of ordinary skill 

would think to thicken one arm of pliers but not the other 

when strengthening the pliers was the goal. Once the 

Board conceded that the prior art does not teach or suggest such a modification, the Board was left with common 

sense for its rationale. The Director makes no attempt to 

justify the Board’s common sense rationale, nor does he 

respond to Nouvel’s plea for at least a remand to present 

its counterargument to the Board. 

To repeat, the key question in this appeal (as well as 

before the Board) is why an ordinary artisan would 

thicken only one arm of Liou’s pliers. Nothing in Liou or 

Herbert teach or suggest anything about relative thickness of the arms in Herbert, and indeed at oral argument, 

the Director conceded that Herbert’s non-flush configuration is apparently achieved by carving a recess into one of 

two equally thick arms. In other words, Herbert’s configuration is arguably achieved by thinning rather than 

thickening one of its two arms. As such, Herbert can 

stand for no more than the proposition that a pliers’ arm 

may extend beyond the depth of the recess in which it 

sits. 

Without any teaching in the prior art that a reason 

exists to thicken Liou’s arm 20 (so as to necessitate the 

conversion of a flat plate to an Omega shape), we are left 

with the Board’s common sense explanation. As shown, 

Nouvel challenges that explanation. In its briefs and at 

oral argument, Nouvel provided multiple reasons, 

grounded in mechanics, why an ordinary artisan aiming 

to increase strength by increasing size would enlarge both 

arms of the pliers. The Director urges us to ignore Nouvel’s reasons, saying they are mere “attorney argument.” 
IN RE NOUVEL 16

The Director misses the point. Nouvel’s arguments to this 

court are the ones it would have made to the Board had 

the examiner’s original rejection been grounded in the 

common sense of an ordinary artisan instead of Herbert’s 

teachings. Nouvel cannot be faulted for pointing out that 

there is at least an open question whether it is common 

sense, or nonsense, to thicken only arm 20 of Liou’s pliers. 

In sum, because the prior art standing alone does not 

provide substantial evidence that one of ordinary skill in 

the art would enlarge only one arm of Liou, only common 

sense properly applied could support the Board’s final 

decision. But because common sense was introduced as a 

new ground by the Board, our precedent instructs that we 

vacate the Board’s decision and remand to afford Nouvel 

the opportunity to respond to the common sense rationale. 

See In re Stepan Co., 660 F.3d 1341, 1346 (Fed. Cir. 2011); 

In re Leithem, 661 F.3d 1316, 1321 (Fed. Cir. 2011). 

CONCLUSION

For the foregoing reasons, we vacate and remand. 

VACATED AND REMANDED 

COSTS

No costs. 
NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit 

__________________________ 

IN RE CLAUDE NOUVEL 

__________________________ 

2011-1526 

__________________________ 

Appeal from the United States Patent and Trademark 

Office, Board of Patent Appeals and Interferences in 

Serial No. 11/785,758. 

__________________________ 

BRYSON, Circuit Judge, dissenting. 

Because I do not interpret the decision of the Board of 

Patent Appeals and Interferences to be based on a new 

ground for rejecting Nouvel’s claims, I respectfully dissent. 

The majority asserts that “the key question in this 

appeal . . . is why an ordinary artisan would thicken only 

one arm of Liou’s pliers.” Nouvel similarly argues that 

one of ordinary skill in the art would never thicken just 

one arm of the pliers, because to do so without thickening 

the other arm would not increase the overall strength of 

the pliers. I disagree that the question in this case is 

whether (or why) one of ordinary skill in the art would 

thicken only one arm of a pair of pliers. The invention is 

not thickening one arm of a pair of pliers while not altering the thickness of the other. The invention is using an 
IN RE NOUVEL 2

omega-shaped plate to cover the portion of a pliers arm 

that protrudes above the level of the recess in which it is 

received. Because the claims would read on a pair of 

pliers in which both arms protrude beyond the recesses in 

which they are received, or in which the strength of the 

nonprotruding arm is made equal to the strength of the 

protruding arm by the support provided by the plate, it is 

irrelevant whether there would be any reason to 

strengthen one arm of a pair of pliers without strengthening the other. 

The examiner’s analysis, like the Board’s, was based 

on the two principal references, Herbert and Liou. The 

Herbert reference, cited by the examiner and the Board, 

discloses a pair of pliers with a first arm that protrudes 

above the depth of the recess in the second arm. The Liou 

reference, also cited by the examiner and the Board, 

discloses a plate covering the recess in the second arm 

and the portion of the first arm contained within that 

recess. The question before the examiner and the Board 

was therefore whether it would be obvious to a person of 

ordinary skill in the art to cover the thickened arm of 

Herbert with the plate of Liou by modifying the shape of 

the plate to accommodate the protruding portion of the 

first arm. The examiner and the Board both found that 

modifying the plate of Liou by raising the center of the 

plate in order to accommodate the protruding portion of 

the first arm would be obvious to a person of skill in the 

art. As the Board put it, “the corresponding modification 

of Liou’s panel . . . to provide an offset in the central 

portion thereof to accommodate the thickness of the 

intermediate section . . . extending beyond the recess . . . 

in the raised or offset arm configuration would involve 

only ordinary creativity, and would not be uniquely 

challenging to a person of ordinary skill in the art.” 
3 IN RE NOUVEL

The Board explained that neither Herbert nor Liou 

attributed any significance or criticality to the depth of 

the recess in the first arm relative to the thickness of the 

intermediate section of the second arm. Accordingly, the 

Board stated, the option to select either the nonprotruding second arm of Liou or the protruding second 

arm of Herbert would have been obvious to a skilled 

artisan. The Board added that to recognize that thickening the intermediate section on Liou’s first arm without 

increasing the depth of the recess in Liou’s second arm 

“would produce a stronger [first arm] without weakening 

or requiring additional thickness in the [second arm] 

involves only a rudimentary understanding of mechanics 

and is a simple matter of common sense, well within the 

technical grasp of a person of ordinary skill in the art.” 

In light of those well-supported findings, this case 

cries out for the application of the principles of KSR 

International Co. v. Teleflex Inc., 550 U.S. 398 (2007). 

There are only a “finite number of identified, predictable 

solutions” to strengthen a metal component. Id. at 402-

03. One such approach—one that the Board found would 

be obvious to a person of skill in the art—would be to 

make the metal arm thicker. And in fact that is the exact 

arrangement contemplated by Herbert, which describes a 

set of pliers in which an arm is thicker than the recess 

provided for it. 

The majority concludes that remand is required because the Board introduced “common sense” as a new 

ground of rejection. The majority asserts that the examiner’s rejection of Nouvel’s claims was grounded solely in 

the teachings of Liou and Herbert, and that the Board 

substituted “common sense” for the Herbert reference as a 

reason why, in combination with the teachings of Liou, 
IN RE NOUVEL 4

the claims were obvious. I disagree with that characterization of the Board’s decision. 

The Board’s reference to “common sense” was not a 

new ground of rejection, but simply a way of describing 

matters that would be plain to a person of ordinary skill 

in the art. As the Board put it, recognizing that thickening one arm without making the other arm thinner would 

increase the strength of the first arm without weakening 

the second “involves only a rudimentary understanding of 

mechanics and is a simple matter of common sense, well 

within the technical grasp of a person of ordinary skill in 

the art.” As the full quotation makes clear, the Board’s 

use of the term “common sense” was simply a way of 

emphasizing that the knowledge required to understand 

the effect of thickening one arm without reducing the 

thickness of the other is not only well within the knowledge of a skilled artisan, but is “rudimentary.” The 

Board’s analysis thus uses the term “common sense” in 

the context of its focus on the understanding of a person 

of ordinary skill in the art. And in so doing, the Board 

followed the same analytical path as the examiner, who 

wrote that it “would have been obvious to one of ordinary 

skill in the art, at the time the invention was made, to 

modify the invention of Liou with an Omega shaped plate 

to accommodate a second arm having thicker dimension” 

in an application requiring higher strength or structural 

integrity. Implicit in that comment is that in order to 

increase the strength of a metal component, the common 

sense approach—particularly to one of skill in the art—

would be to increase its thickness. 

Common sense, used in connection with the knowledge of a person skilled in the art, is an inherent component of an examiner’s consideration of an application. As 

we have explained, “the sources of information for a 
5 IN RE NOUVEL

properly flexible obviousness inquiry . . . include . . . the 

background knowledge, creativity, and common sense of 

the person of ordinary skill.” Perfect Web Techs., Inc. v. 

InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The 

examiner’s analysis “may include recourse to logic, judgment, and common sense available to a person of ordinary 

skill that do not necessarily require explication in any 

reference or expert opinion.” Id. Here, both the examiner 

and the Board relied on the sensible and uncontroverted 

proposition that in order to strengthen a metal component, a person of ordinary skill would increase its thickness. Because both the examiner’s rejection and the 

Board’s decision were based on principles known to persons of skill in the mechanical arts in conjunction with 

the teachings of the Herbert and Liou references, the 

Board’s decision does not contain a new ground of rejection. I would affirm the Board’s determination.