In re: Marcel Van Os et al.

Docket No. 2015-1975 (Ser. No. 12/364,470)

January 3, 2017

Brief Summary: Board obviousness decision reversed due to lack of “explicit and clear reasoning” regarding motivation to combine.

Summary: Van Os appealed PTAB rejection of its claims to a touchscreen device for obviousness over two prior art patent documents (Hawkins and Gillespie). The independent claims at issue (38, 40) require an “‘interface reconfiguration mode’ to permit icon rearrangement”. Claim 38 requires “a ‘first user touch’ to open an application, a longer ‘second user touch’ to initiate the interface recognition mode, and a ‘subsequent user movement’ to move an icon”. Claim 40 does not require the “touch to open an application, but recites that its ‘first use touch of at least an established duration’ initiates the interface recognition mode and allows movement of an icon ‘in the absence of a further user input.’” The Examiner concluded, and the PTAB agreed, that Hawkins “discloses each limitation of claim 38, but ‘does not explicitly disclose that the interface recognition mode is initiated by a user touch of a longer duration than a user touch of a first duration used to initiate an application corresponding to an icon” but that Gillespie disclosed “a sustained touch and reasoned adding this feature to Hawkins ‘would be an intuitive way for users of Hawkins’ device to enter into the editing mode”, and that claim 40 is “substantially the same”. The Board’s factual determinations were reviewed for substantial evidence and its legal determinations de novo (Belden, FC 2015). The FC panel noted that “the Board found, without further discussion, that the combination of Gillespie with Hawkins would have been ‘intuitive.’” It also explained that “[s]ince KSR, we have repeatedly explained 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, FC 2013; Arendi, FC 2016 (“[R]eferences to ‘common sense’…cannot be used as a wholesale substitute for reasoned analysis and evidentiary support…”); DyStar, FC 2006 (“while the Board may rely on common sense, it must ‘explain why “common sense” of an ordinary artisan seeking to solve the problem at hand would have led him to combine the references.”)) It wrote that “[a]bsent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious’” which “is inadequate to support a finding that there would have been a motivation to combine” (“This type of finding, without more, tracks the ex post reasoning KSR warned of and fails to identify an actual reason why a skilled artisan would have combined the elements in the manner claimed.”) It concluded that “neither the Board nor the examiner provided any reasoning or analysis to support finding a motivation” to combine the references “beyond stating it would have been an intuitive way’ to initiate Hawkins editing mode” and therefore vacated and remanded the decision. Judge Newman’s dissent argued that “remand is not the appropriate remedy” here since “the PTO has not carried its burden of establishing unpatentability” and, therefore, “Apple is ‘entitled to a patent’” under 35 U.S.C. § 102(a) (Application of Warner, CCPA 1967; In re Rouffet, FC 1998; In re Oetiker, FC 1992; Arendi, FC 2016).

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