The examiner rejected, on obviousness grounds, claims directed to a touchscreen interface in a portable electronic device allowing users to rearrange icons. The Patent Trial and Appeal Board (PTAB) affirmed. The examiner and the PTAB found that the claims, which used a longer “second user touch” to initiate the reconfiguration mode and a “subsequent user movement” to rearrange icons, would have been obvious over a combination of the prior art references. The applicants appealed.
On appeal, the Federal Circuit vacated and remanded. It held that the PTAB’s finding of obviousness over a combination of prior art, supported by “common sense” and intuitiveness, without more, was inadequate to find a motivation to combine. While the Supreme Court’s decision in KSR grants flexibility, a finding of obviousness grounded in common sense must nonetheless contain explicit and clear reasoning. Here, neither the PTAB nor the examiner provided any reasoning or analysis to support finding a motivation to add to the disclosure of the two references beyond stating it would have been an “intuitive way” to initiate one of the reference’s editing mode. The Federal Circuit concluded that when the PTAB’s action is “potentially lawful but insufficiently or inappropriate explained,” it is proper to vacate and remand for further proceedings.