Patent Office Must Provide Reasoned Analysis to Support Obviousness Rejection

February 2017

In Re Van Os, No. 2015-1975 (Fed. Cir. Jan. 3, 2017)

 

In Van Os, the Federal Circuit reversed an obviousness rejection by the Patent Office’s based on a bare statement that a proposed combination of prior art was “intuitive.”

Marcel Van Os and others at Apple, Inc. were joint inventors of a patent application directed to a touch screen interface on portable devices that allows a user to rearrange icons. The claimed interface required the user to touch the screen for an established duration to initiate a reconfiguration mode, combined with subsequent user movement to move an icon.

The application was rejected by the Patent Office as obvious over a combination of two prior art references. The first reference disclosed a communication device with a touchscreen where the user could rearrange buttons by clicking an “Edit Favorites Button” and dragging buttons from one location to another. The second device disclosed a touch screen interface with icons that could be “activated” by various means, including a sustained touch. The examiner found that the first reference could be modified by having the user enter the editing mode using the activate-by-long-touch method of the second reference, and that the combination would be an intuitive. The combination thus rendered the claims obvious. The Patent Trial and Appeal Board affirmed the rejection, and Van Os appealed the Board’s decision to the Federal Circuit.

On appeal, the Federal Circuit reversed the obviousness rejection as unsupported by the necessary reason and analysis.  Supreme Court precedent permits, and indeed requires, factfinders to apply common sense when determining if a motivation to combine references exists. However, any such findings must contain explicit and clear reasoning providing some rational underpinning as to why common sense compels the finding. A statement that the combination is “intuitive” is equivalent to a bare statement that it is obvious, and is insufficient to support an obviousness rejection. The Federal Circuit therefore vacated the Board’s decision and remanded to the Patent Office.

Judge Newman issued a concurring opinion, agreeing that the Patent Office failed to support its obviousness rejection. However, in her opinion the Patent Office’s rejection was so unreasonable that the correct remedy should have been to reverse the rejection and allow the patent.

Key Takeaway: The Patent Office is permitted to rely on common sense in support of a finding that a claim in an application would have been obvious over the prior art. However, such a rejection requires some rational underpinning beyond a statement that the combination would have been intuitive or common sense.