In re Van Os (Fed. Cir. 2017)

"Intuitive" to Combine Insufficient to Support Obviousness Rejection

By Joseph Herndon --

The Federal Circuit recently issued a decision in an appeal from the U.S. Patent and Trademark Office Patent Trial and Appeal Board in a case captioned In re Marcel Van Os, Freddy Allen Anzures, Scott Forstall, Greg Christie, and Imran Chaudhri.  The appellants, Marcel Van Os and other inventors at Apple Inc., appealed from a decision of the Board affirming the Examiner's rejection of claims 38–41 of U.S. Patent Application No. 12/364,470 ("the '470 application").  The Federal Circuit vacated and remanded due to the Board and Examiner's insufficient factual reasoning stated for the combination of references used in the rejection.  Notably, the Federal Circuit rejected the notion that references may be "intuitively" combined, and alternatively required a factual rationale to be provided for such a combination.

The '470 application is directed to a touchscreen interface in a portable electronic device that allows a user to rearrange icons.  Claims 38 and 40 both recite the initiation of an "interface reconfiguration mode" to permit icon rearrangement.

Claim 38 distinguishes among a "first user touch" to open an application, a longer "second user touch" to initiate the interface reconfiguration mode, and a "subsequent user movement" to move an icon.  Claim 40 does not recite a touch to open an application, but recites that its "first user touch of at least an established duration" initiates the interface reconfiguration mode and allows movement of an icon "in the absence of a further user input."

The Board reversed the examiner's rejection of twenty- nine claims but affirmed that claims 38–41 would have been obvious over U.S. Patent No. 7,231,229 ("Hawkins") and U.S. Patent Application Publication No. 2002/0191059 ("Gillespie").  Hawkins discloses a personal communication device with a touch-sensitive screen.  Hawkins teaches that an "Edit Favorites Button" can be selected from a menu or keyboard command for "performing button 701 configuration and/or editing," and that "a user can rearrange buttons 701 by dragging button 701 from one location to another . . . ."

Gillespie discloses an interface on a computer touch pad with an unactivated and activated state.  Gillespie discloses that in the activated state, icons are functional and can be removed or rearranged.  It teaches that an individual icon could be "activated" by various means, such as touching an icon with multiple fingers or with rapid double taps, hovering the finger over an icon without touching the touch screen, or holding the finger on an icon for a sustained duration, whereas "single taps near an icon could be interpreted as normal mouse clicks."

The Examiner found that Hawkins discloses each limitation of claim 38, but "does 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."  To satisfy this limitation, the Examiner relied on Gillespie's disclosure of 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."  The Examiner found claim 40 to be "substantially the same" and rejected it on the same basis.

The Board incorporated the Examiner's analysis and concluded that the Examiner did not err in holding that claims 38 and 40, and dependent claims 39 and 41, would have been obvious over a combination of Hawkins and Gillespie.

The Federal Circuit, however, found that the Board's conclusion that claims 38–41 of the '470 application would have been obvious was erroneous.  That finding hinged on a person of ordinary skill in the art being motivated to modify Hawkins' initiation of an editing mode via menu selection or keyboard command with Gillespie's disclosure of a sustained touch, "holding the finger steady over an icon for a given duration" to "activate" an icon.

Specifically, the Board found, without further discussion, that the combination of Gillespie with Hawkins would have been "intuitive."  The Federal Circuit noted that in KSR, the Supreme Court criticized rigid preventative rules that deny factfinders recourse to common sense when determining whether there would have been a motivation to combine prior art, but the flexibility afforded by KSR did not extinguish the factfinder's obligation to provide a reasoned analysis.

The Federal Circuit has 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.  The Federal Circuit noted that 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 Federal Circuit noted 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."  Such a conclusory assertion with no explanation is inadequate to support a finding that there would have been a motivation to combine.

Here, neither the Board nor the Examiner provided any reasoning or analysis to support finding a motivation to add Gillespie's disclosure to Hawkins beyond stating it would have been an "intuitive way" to initiate Hawkins' editing mode.  The Board did not explain why modifying Hawkins with the specific disclosure in Gillespie would have been "intuitive" or otherwise identify a motivation to combine.

The Federal Circuit noted that when the Board's action is potentially lawful but insufficiently or inappropriately explained, they have consistently vacated and remanded for further proceedings.  Thus, for these reasons, the Board's holding that claims 38–41 of the '470 application would have been obvious was vacated and remanded.

Judge Newman, writing an opinion concurring in part and dissenting in part, agreed that the bare recitation by the Board and Examiner of intuitiveness to combine the disclosures of the Gillespie and Hawkins references was inadequate to support a ruling of obviousness.  However, Judge Newman dissented with the decision to remand as an inappropriate remedy in examination appeals in which the USPTO has not carried its burden of establishing unpatentability.  Judge Newman stated that on "our affirmance that the PTO has not established unpatentability, Apple is 'entitled to a patent,'" according to 35 U.S.C. § 102(a).

Judge Newman noted that the statute provides:  "A person shall be entitled to a patent unless—."  35 U.S.C. 102(a).  Thus, the burden of establishing unpatentability rests with the PTO during examination, and if the PTO fails to carry that burden, by statute the applicant is "entitled to a patent."

When the Patent Office, as it did here, relies on the naked invocation of skill in the art to supply a suggestion to combine the references, with no adequate explanation, reasoning, or analysis, the statutorily required result is reversal.

Judge Newman criticized the panel majority for describing the Board's reasoning as "potentially lawful but insufficiently or inappropriately explained."  Judge Newman believed that the issue here is not a lack of specificity or absence of citation to the record or to legal authority, but rather the Board and the Examiner, without citation or explanation, justified the combination of Gillespie's sustained touch on a computer mousepad to initiate the editing menu on Hawkins' portable electronic device.  Because the Examiner and the Board did not meet the statutorily required burden of demonstrating unpatentability, although they had full opportunity to do so, the appropriate remedy is to instruct that the claims be allowed and the patent granted.

It will be interesting to see how the Examiner now addresses the '470 application as prosecution is reopened, and whether the Examiner may simply issue a Notice of Allowance, given Judge Newman's strong indication to do so.  In any event, it is encouraging to see the Federal Circuit push back on these type of generic/unsupported rejections that are issued by the USPTO.

In re Van Os (Fed. Cir. 2017)
Panel: Circuit Judges Newman, Moore, and Wallach
Opinion by Circuit Judge Moore; opinion concurring in part and dissenting in part by Circuit Judge Newman

Comments

[AAA JJ]

I took a look at this case. It is another in a long line of cases where the PTAB cites the boilerplate of In re Keller for the proposition that the applicant "cannot attack the references individually." The usual pattern is the examiner acknowledges that reference A doesn't show claim feature X, cites reference B as disclosing something that is not feature X, and when applicant argues, "Reference B doesn't show feature X" the examiner responds that the argument isn't persuasive because the applicant "cannot attack the references individually when the rejection is based on the combined teachings of the references." Huh? If neither reference A nor reference B teach feature X, how does their combination teach it? The answer of course is: it doesn't.

Sad to see the PTAB rubber stamping such nonsense.

[GrzeszDeL]

The Van Os slip opinion is only nine pages long, but every one is a gem. Judge Rich used to joke that the PTO should have a wallpaper runner printed to decorate the top of every examiner's office with a repeating scroll of the words "useful, novel, & nonobvious, useful, novel, & nonobvious... ." I think that they should update that decoration with another runner below that repeats "KSR did not extinguish the factfinder’s obligation to provide reasoned analysis," and the USPQ2d cite to the Van Os opinion.

[EG]

"It is another in a long line of cases where the PTAB cites the boilerplate of In re Keller for the proposition that the applicant "cannot attack the references individually."

Hey AAA JJ,

I too see Keller cited in my Office Actions ad infinitum. Just so much malarkey as far as I'm concerned. I usually respond by saying we're not "attacking" references separately, but pointing out the impropriety combining the references without factual or legal support to do so.

[GrzeszDeL]

Keller and McLaughlin (443 F.2d 1392, 1395, "Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning...") are two of the worst cases that the CCPA ever handed down, not because there is anything wrong with the rule or the holding in either of them, but simply because of the misuse to which the PTO has put each of them. Those two cases have each become talismans by which Examiners are authorized to excuse themselves from having to think about Applicant's argument.

As soon as an Examiner sees a mention of an individual reference rather than "the cited art," Keller may be invoked to excuse the Examiner from reading (or thinking) any further. Similarly, as soon as the word "hindsight" appears in a response, the Examiner may simply recite "McLaughlin" and be excused from putting any further mental effort into understanding the argument that the Applicant advances.

Here's hoping that in some forthcoming case, the CAFC does to Keller and/or McLaughlin what Van Os just did to arguments about KSR and "common sense."

[EG]

"Keller and McLaughlin (443 F.2d 1392, 1395, "Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning...") are two of the worst cases that the CCPA ever handed down"

Hey GrzeszDel,

Completely agree with your comment, including noting that McLaughlin is in the same inane class as Keller. Even PTAB misapplies Keller.

[Simon Elliott]

Newman's dissent raises an important issue: under what circumstances should the remedy be allowance instead of remand. Given that the applicant spent years of delay and tens of thousands of dollars on appeal, should the patent office get another chance to get it right?