In In Re: Van Os, the Federal Circuit heard an appeal from a Patent and Trademark Appeal Board decision reaffirming an examiner's 35 U.S.C. § 103(a) rejection of claims 38-41 of patent application 12/364,470 over two prior art references, Hawkins et al. U.S. Patent No. 7,231,229 in view of Gillespie et al. U.S. Pub. No. 2012/0191029.
Claims 38-41 of the '470 patent application relate to a portable electronic device with a touch screen interface displaying a plurality of icons, and implementing a reconfiguration mode allowing for the reorganization of the plurality of icons with respect to one another based on touching a particular icon for a duration longer than a duration required to initiate the application corresponding to the particular icon.
The examiner found the Hawkins reference disclosed each limitation, but did not explicitly disclose that the interface reconfiguration 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. The examiner determined that the Gillespie reference satisfied this limitation, and reasoned adding this feature to Hawkins would be an intuitive way for users of Hawkins' device to enter into the editing mode. The Board incorporated the examiner's analysis, concluded the examiner did not err in holding the claims obvious.
In its discussion of motivation to combine references, the Federal Circuit first looked to KSR. The Court recognized that KSR criticized rigid preventative rules that deny factfinders recourse to common sense when determining whether there would have been a motivation to combine prior art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Further, KSR credits common sense and creativity of a skilled artisan to assess whether there would have been a motivation to combine elements from prior art references in the manner claimed. Id. 418-21.
However, the Court further recognized that the flexibility afforded by KSR did not extinguish the factfinder's obligation to provide reasoned analysis. Instead, KSR specifically instructs that when determining whether there would have been a motivation to combine, the "analysis should be made explicit." Id. at 418.
Therefore the Court reasoned 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, and 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.
The Court held that absent 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", and such a conclusory assertion with no explanation is inadequate to support a finding that there would have been a motivation to combine.
Therefore in this case the Court ruled that neither the Board nor the examiner provided any reasoning or analysis to support finding a motivation to combine the disclosures beyond stating it would have been an intuitive way to initiate Hawkins editing mode, and they vacated the Boards finding that claims 38-41 were obvious and Remanded the case back to the Board.
Judge Newman concurred in part and dissented in part, concurring in that she agreed that the bare recitation by the Board and examiner that it would have been "intuitive" to combine the disclosures is inadequate to support a ruling of obviousness, and dissenting in that remand is not the appropriate remedy in examination appeals in which the PTO has not carried its burden of establishing unpatentability