• Fred Hadidi

When patent claims are rejected as obvious, is it proper for the Office to justify the rejection by

In Re Marcel Van Os et al.

2015-1975 Decided: January 3, 2017

Case Summary

When patent claims are rejected as obvious, is it proper for the Office to justify the rejection by stating that a particular combination of references would have been “intuitive”? In an appeal from the PTAB, the US Court of Appeals for the Federal Circuit said no: to be proper, rejections based on intuition or common sense must clearly explain why an artisan of ordinary skill would be motivated to combine or modify the references to arrive at the claimed invention; without this, the Court cannot perform any meaningful review.

This case involves Apple, Inc.’s attempt to patent a technique used to rearrange the icons shown on an iPad’s or iPhone’s screen. In one of the claims at issue, a “first user touch of at least an established duration” initiates a reconfiguration mode that allows movement of an icon on the screen “in the absence of a further user input.” The Office had rejected this and similar claims over the combination of two prior art references: one to Hawkins and the other to Gillespie.

Hawkins is a patent covering a portable device (a telephone) with a touchscreen that can display a group of “speed dial” buttons. It teaches that by selecting an “Edit Favorites Button,” the user can rearrange the speed dial buttons by dragging them from one location to another.

Gillespie is a published patent application that discloses an interface on a computer touch pad with an “unactivated” and an “activated” state. In the activated state, icons can be removed or rearranged; individual icons may be “activated” in various ways, including by holding a finger on an icon for a given duration.

Apple appealed the examiner’s rejections to the PTAB, which affirmed the rejections by finding—without further discussion—that the combination of Gillespie with Hawkins would have been “intuitive.”

In the majority opinion, the Federal Circuit cited KSR and a slew of its own cases for the proposition that to invoke “common sense” or “intuition” when extrapolating from the prior art to a conclusion of obviousness, the finder of fact must explain its reasoning with enough detail to allow the Federal Circuit to conduct a meaningful review. Conclusory assertions to the effect that a particular combination of prior art references would have been “intuitive” or “common sense” are no different than stating that the combination “would have been obvious,” and are insufficient to support a finding that an ordinarily skilled artisan would have been motivated to make the combination. The opinion concluded by vacating the PTAB’s decision and remanding the case to the Patent Office.

Writing separately, Judge Newman concurred with the majority’s holding that the PTAB’s obviousness determination lacked adequate support, but disagreed with the decision to remand the case. Instead, she argued that when the PTO has not carried its burden of establishing unpatentability, 35 U.S.C. § 102(a) says that the applicant is “entitled to a patent.” Therefore, “the appropriate remedy is to instruct that the claims be allowed and the patent granted.”

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