“I can’t explain myself, I’m afraid, sir, said Alice, “because I’m not myself, you see.”

-Lewis Carroll Alice’s Adventures in Wonderland (1865)

After her strange trip down the rabbit hole, we might all be willing to cut Alice some slack for being confused in her response to the Caterpillar’s demand, “Explain yourself!” Lately, however, the Federal Circuit has become increasingly strict with the USPTO Board and examiners when they fail to explain adequately the basis for an obviousness ruling. In fact, a splash of recent decisions makes me wonder if this is mere ripple in Section 103 jurisprudence or a welcome wave of change.

The tide turned about a year ago in Intelligent Bio-Systems v. Illumina Cambridge (decided May 9, 2016). In that case, Illumina owned a patent related to a method of labeling nucleosides in a DNA strand. Intelligent Bio-Systems used inter partes review (IPR) to assert that claims were obvious. The PTAB ruled that the claims were patentable because the prior art provided no reasonable expectation of success. On appeal, the Federal Circuit affirmed the judgment but criticized the Board’s reasoning, saying it wrongly conflated the “motivation to combine” and “reasonable expectation of success” prongs into a single concept. For more about this case, see our earlier article HERE.

More recently, the Federal Circuit corrected the Board again in In re NuVasive, Inc. (decided December 7, 2016). NuVasive owns U.S. Pat. No. 8,341,156, which covers a spinal fusion implant having “radiopaque” markers that extend into sidewalls near the middle of the implant. When Medtronic challenged the patent in an IPR proceeding, the Board found claims obvious from a combination of two references. The Federal Circuit reversed, ruling that the Board failed to adequately support its obviousness conclusion. In discussing the legal standard for obviousness, the court quoted from In re Lee, 277 F.3d 1338 (Fed. Cir. 2002) to remind us that the “factual inquiry whether to combine references must be thorough and searching” and “[t]he need for specificity pervades [our] authority.” The court agreed with NuVasive that the PTAB improperly relied on a conclusory statement and a “common sense” argument advanced by Medtronic’s expert. Judge Wallach explained that the PTAB must “articulate logical and rational reasons for its decisions” to allow the court to exercise its duty to review decisions to determine whether they are arbitrary and capricious, an abuse of discretion, or unsupported by substantial evidence. According to the court, the “PTAB knows how to meet this burden” because it has done so recently in other cases such as Allied Erecting & Dismantling Co. v. Genesis Attachments LLC (decided June 15, 2016). In NuVasive, however, the court found the Board’s findings to be conclusory, unpersuasive, and lacking evidentiary basis.

Ripples continued with In re Van Os (decided January 3, 2017), an ex parte appeal. Here, the invention was a touchscreen interface that allows users to activate a reconfiguration mode for icons with a prolonged touch. The Board agreed with the examiner that the claimed touch feature was “intuitive,” therefore obvious. The Federal Circuit vacated the judgment and remanded to the Board. Although “common sense” can be considered, KSR v. Teleflex still demands explicit reasoned analysis of whether there is motivation to modify or combine references. To conclude that the feature was “intuitive” or “common sense” without the reasoned explanation of why the skilled person would have combined reference teachings is unacceptable.

In Personal Web Technologies v. Apple (decided February 14, 2017), the invention of U.S. Pat. No. 7,802,310 related to a way of tagging electronic files with a “content-based name” to control file access. Apple asserted obviousness in an IPR proceeding and the PTAB agreed. However, the Federal Circuit vacated and remanded, ruling that the PTAB failed to support its findings that all elements were in the prior art and that there was motivation to combine reference teachings accompanied by a reasonable expectation of success. The court rejected the Board’s explanation that the prior art “would have allowed for” modification of the reference teachings (i.e., “could have modified”) as asserted by Apple. But “could” is not “would.” According to the court, complex or obscure technologies will usually require more than a brief explanation for why there was motivation to modify or combine reference teachings.

Yet another wave washed over the Board with Icon Health & Fitness v. Strava (decided February 27, 2017). In an inter partes reexamination of U.S. Pat. No. 7,789,800, the Board supported Strava’s assertion that claims to a method and system for controlling exercise equipment using a USB-compatible, portable remote device were obvious from prior art. The Federal Circuit found the Board’s reasoning “sparse but adequate” with respect to some claims but found no substantial evidence to support Board findings related to other claims. Multi-layer rubber stamping by the examiner and Board of arguments advanced by counsel for Strava failed to satisfy the court that the Board had done its job of explaining why the claims were obvious. As the court wrote, “[a]ttorney argument is not evidence.” The PTAB may adopt the examiner’s position as its own when the examiner’s reasoning is thorough and well-explained, but it still needs to explain why it accepts an argument.

The take-home lesson for patent practitioners? It’s human nature to cut corners, and the Federal Circuit is on alert for shortcuts in obviousness analysis by the PTAB or examiners. In my experience, most Office actions brim with passages from prior art references but waste little ink—seldom more than a sentence—asserting the motivation to modify or combine reference teachings. Often, the motivation is simply that the references “are in the same field of endeavor,” “both relate to coatings,” or similar language. Applicants are left to argue or demonstrate otherwise. We patent attorneys and agents need to patrol our Office actions (and Board decisions) to confirm that the examiner has, in fact, provided a thorough and well-reasoned explanation for any assertion of obviousness. And that explanation needs to address both the “motivation to combine” and the “reasonable expectation of success.” The cases discussed above provide helpful ammunition for reminding the Office of its burden to explain.

As Alice might say, the law of obviousness gets “curiouser and curiouser.” A shifting tide now favors patent applicants, at least regarding the Office’s need to better explain the basis for that most common of all rejections. Time will tell whether the waves will settle quietly or whether “Surf’s up!” and it’s time to “Hang ten!”