The Federal Circuit has once again vacated and remanded a PTAB decision on the basis that the PTAB did not adequately explain its reasons for finding a claimed invention obvious, but this time in the context of an appeal decision affirming an examiner’s rejection of pending claims.

In In re: Marcel Van Os et al., Appeal No. 2015-1975 (Fed. Cir. Jan. 3, 2017), the Federal Circuit vacated and remanded the PTAB’s affirmance, on appeal, of the examiner’s rejection of claims 38-41 of U.S. Patent Application No. 12/364,470 (“the 470 application”) as being obvious over U.S. Patent No. 7,231,229 (“Hawkins”) in view of U.S. Pub. No. 2002/0191059 (“Gillespie”).

The court’s opinion focuses on independent claim 38 of the ‘470 application, which is generally directed to initiating an “interface reconfiguration mode” that allows a user of a portable electronic device to rearrange icons via a touchscreen interface. The claim recites, in relevant part, a “first user touch” to open an application, a “second user touch,” longer than the first user touch, to initiate an interface reconfiguration mode, and a “subsequent user movement” to move an icon on the interface.

In affirming the examiner’s rejection for obviousness, the PTAB first agreed with the examiner’s finding that the Hawkins reference discloses the recited first and second user touches and the “subsequent user movement,” but does not 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,” as claimed. The PTAB nonetheless agreed with the examiner’s finding that Gillespie discloses the missing limitation because it discloses a computer touch pad having an interface configurable between an unactivated state and an activated state, wherein icons on the interface can be activated by, for example, “holding the finger on an icon for a sustained duration,” and subsequently removed or rearranged. The PTAB also agreed with the examiner’s reasoning that one of ordinary skill in the art would have been motivated to modify Hawkins to include the sustained touch feature disclosed by Gillespie, because such a modification “would be an intuitive way for users to enter into the editing mode.”

The Federal Circuit determined that there was not adequate support for the PTAB’s conclusion of obviousness, stating that neither the PTAB nor the examiner had adequately explained why one of ordinary skill in the art would have combined Hawkins and Gillespie in the proposed manner. The PTAB’s statement that the proposed combination would have been “intuitive,” was not sufficient, because the PTAB did not, for example “explain why modifying Hawkins with the specific disclosure in Gillespie would have been ‘intuitive’ or otherwise identify a motivation to combine.” Slip op. at 5. Thus, the PTAB’s finding was “no different” than stating the conclusion that the proposed combination would have been obvious, which cannot support a finding of a motivation to combine and instead screams of the type of ex-post facto reasoning the Supreme Court warned about in KSR. Slip op. at 5.

Interestingly, despite finding that the PTAB’s finding of a motivation to combine was not supported by sufficient reasoning or analysis, the court vacated the PTAB’s decision and remanded the case back to the PTAB for further consideration, rather than reversing the PTAB’s decision. According to the court, such a procedure is appropriate when agency action is, “potentially lawful but insufficiently or inappropriately explained .” Slip op. at 6. Judge Newman, concurring in part and dissenting in part, took issue with the court’s decision to remand the case: “remand is not the appropriate remedy in examination appeals in which the PTO has not carried its burden of establishing unpatentability. On our affirmance that the PTO has not established unpatentability, [the Appellants are] ‘entitled to a patent.’” Dissent at 1. While the Appellants are likely pleased with the Federal Circuit’s disposition of the appeal, the Appellants undoubtedly would have preferred the court to reverse the PTAB’s decision, consistent with Judge Newman’s opinion.