Not Intuitively Obvious: Federal Circuit Remands for Explicit Rational to Combine
In a rebuke of the Patent Trial and Appeal Board’s (PTAB’s) obviousness analysis, the US Court of Appeals for the Federal Circuit vacated and remanded a PTAB obviousness determination, explaining that the PTAB failed to explicitly articulate a reason why it would have been obvious to combine the prior art references. In re Van Os, Case No. 15-1975 (Fed. Cir., Jan. 3, 2017) (Moore, J.) (Newman, J., concurring in part, dissenting in part). This decision follows on another recent decision where the Federal Circuit remanded a case to the PTAB because it found that the PTAB failed to articulate reasons why one of skill in the art would be motivated to combine the prior art references (In re NuVasive) (see here).
The patent application at issue relates to a graphical user interface that allows a user to rearrange the displaced icons in response to specific types of “touches” and after entering into a specific type of “interface reconfiguration mode.” During the pendency of the application, the examiner finally rejected various claims, and the inventors appealed those rejections to the PTAB. The PTAB reversed most of the examiners’ rejections but affirmed the obviousness rejection as to four claims. Without discussion, the PTAB found that the combination of two prior art references would have been “intuitive” and that the claims were therefore obvious. The inventors appealed.
The Federal Circuit vacated and remanded the case back to the PTAB, explaining that the PTAB’s analysis lacked explicit factual underpinnings to provide support for its obviousness determination, and that a mere statement that a particular combination would have been “intuitive” was no more proper than merely stating that the “combination would have been obvious.” The Court reminded the PTAB that a factual record with explicit reasons was necessary for the appellate review of whether an obviousness determination is supported by substantial evidence.
Concurring in part, Judge Newman agreed that the PTAB’s obviousness analysis was insufficient. She wrote separately to suggest that while remand may be appropriate in post-grant review proceedings where the PTAB is the trier of fact, a reversal is required when the appeal is made from a final rejection in an examination. Judge Newman would have found that that where, as here, the PTAB fails to meet its burden to prove unpatentability, the patent should be granted without remand.