CAFC: When Relying Common Sense There Must be Explicit and Clear Reasoning

Federal CircuitIn re: Van Os, No. 2015-1975, 2017 U.S. App. LEXIS 3 (Fed. Cir. Jan. 3, 2017) (Before Newman, Moore, and Wallach, J.) (Opinion for the court, Moore, J.) (Concurring in part and dissenting in part, Newman, J.)(Obviousness findings grounded in common sense must contain explicit and clear reasoning that provides some rational underpinning as to why common sense compels such a result.)

Appellants Marcel Van Os and other inventors at Apple, Inc. (collectively, “Van Os”) appeal from a decision of the Patent Trial and Appeal Board (“Board”) affirming an examiner’s rejection of four claims directed to rearranging icons on a touchscreen interface.

There were two independent claims at issue, each describing a way to initiate an interface reconfiguration mode to permit icon rearrangement. Both claims used a sustained user touch to initiate the process. The examiner rejected the application as obvious in light of two prior art references, and stated that sustained touches “would be an intuitive way for users of [the second prior art reference’s] device to enter into the editing mode.” The Board adopted this analysis and concluded that the examiner did not err in holding that the claims would have been obvious.

The Court disagreed. The Board’s determination of obviousness, premised upon an “intuitive” addition to the combined references was conclusory and lacking an explanation to support finding a motivation to combine. The Court reiterated that obviousness findings “grounded in ‘common sense’ must contain explicit and clear reasoning providing some rational underpinning why common sense compels a finding of obviousness.” Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013)(citing KSR). Thus, “neither the Board nor the examiner provided any reasoning or analysis to support finding a motivation” to combine “beyond stating it would have been an ‘intuitive way’ to initiate” the rearrangement of icons.

The Board’s determination was “potentially lawful but insufficiently or inappropriately explained.” The finding of obviousness was vacated and the case was remanded for further proceedings. See In re Lee, 277 F.3d 1338, 1346 (Fed. Cir. 2002).

Judge Newman concurred in part, dissented in part; noting that the Board’s inadequate explanation analysis should have resulted in a reversal, entitling Apple to a patent. Judge Newman found that the examiner’s and the Board’s statement that it would have been “intuitive” to combine the two prior art references not a legally sufficient explanation. Therefore, Judge Newman concluded that the examiner and Board’s failure to meet their statutorily-required burden and their lack of reasoning was “so crippled as to be unlawful” necessitating the appropriate remedy of instructing that the claims be allowed and the patent granted.

Obviousness findings grounded in common sense must contain explicit and clear reasoning that provides some rational underpinning as to why common sense compels such a result.



The Author

Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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