         NOTE: This opinion is nonprecedential.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 ap-
plication of U.S. Patent No. 6,880,434 (issued Apr. 19,
2005) (“the ’434 patent”). Claims 1–10 of the ’758 applica-
tion 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 han-
    dle, the first intermediate articulation region de-
    fining a depression, and a step on either side of
    the depression;
IN RE NOUVEL                                              4


    an interengaged arm having a second jaw, a sec-
    ond intermediate articulation region, and a second
    handle, the second articulation region being re-
    ceived so as to be movable in rotation, and selec-
    tively in translation, in the depression; and

    a plate for holding the second articulation region
    in the depression, ends of the plate being posi-
    tioned 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 restrain-
ing 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 pat-
ent 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 noticea-
bly thicker than the depression carved into arm B. Con-
sequently, 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 accom-
modate 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 un-
moved. Conceding that Herbert did not teach an Omega-
shaped plate, the examiner argued that Herbert is other-
wise 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 conclu-
sion.

     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 “sug-
gests” pliers having channels with a depth that is less
than the thickness of the mating arm. From that sugges-
tion, the examiner shifted gears from the previous posi-
tion 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 sug-
gested 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 con-
figuration (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 articu-
lation 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 thick-
ness of the two arms and rejected the applicant’s asser-
tion 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 modifi-
cation 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 ordi-
nary 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 com-
mon 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 proceed-
ings.

    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 obvi-
ousness 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 conclu-
sion 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 es-
sence 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. Nou-
vel’s artisan would never thicken only one arm of a two-
armed 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 distrib-
uted 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 eliminat-
ing 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 re-
quire 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 conclu-
sory 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 vigi-
lant 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 sug-
gest 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 thick-
ness of the arms in Herbert, and indeed at oral argument,
the Director conceded that Herbert’s non-flush configura-
tion is apparently achieved by carving a recess into one of
two equally thick arms. In other words, Herbert’s con-
figuration 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 Nou-
vel’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 dis-
sent.

    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 alter-
ing 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 strengthen-
ing 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 non-
protruding 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 thicken-
ing 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 be-
cause the Board introduced “common sense” as a new
ground of rejection. The majority asserts that the exam-
iner’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 characteri-
zation 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 thicken-
ing 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 knowl-
edge 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 knowl-
edge of a person skilled in the art, is an inherent compo-
nent 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, judg-
ment, 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 compo-
nent, a person of ordinary skill would increase its thick-
ness. Because both the examiner’s rejection and the
Board’s decision were based on principles known to per-
sons 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 rejec-
tion. I would affirm the Board’s determination.
