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.

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