In In Re: Van Os, Appeal No. 2015-1975, the Federal Circuit held that the Patent Trial and Appeal Board’s reliance on intuition or common sense as a motivation to combine references must be supported by explicit and clear reasoning.
Apple’s inventors appealed the Board’s decision affirming the examiner’s rejection of four claims directed to a touchscreen interface in a portable electronic device that allows a user to rearrange icons. The Board concluded that the claims would have been obvious over a combination of two prior art references.
The Federal Circuit rejected the Board’s finding of obviousness because the Board and examiner did not adequately explain a person of ordinary skill in the art’s (“POSITA”) motivation to combine the prior art references. Neither the Board nor the examiner had provided any reasoning or analysis to support a motivation to combine references beyond stating it would have been “intuitive.” The Court noted that common sense can provide a motivation to combine prior art references, but explained that explicit and clear reasoning is needed to provide a rational underpinning for why common sense compels a finding of obviousness. Therefore, the Court vacated and remanded for additional findings and explanation by the Board.