Proper Obviousness Rejection Requires a Rationale for Combining Prior Art References

Posted by Emily Gardel on May 31, 2017

In In re: Van Os, the Federal Circuit maintained that in formulating an obviousness rejection, a reasoned rationale to combine references is required.

What This Means to You

  • If you are faced with an obviousness rejection that combines two or more references, review the rejection to see whether the examiner provided explicit and clear reasoning to support a motivation to combine. If the examiner used conclusory statements without providing a reason, then consider addressing this lack of rationale in responding to the rejection.
  • It may be worthwhile to consider appeal for lack of rationale to combine prior art references. If you plan to appeal, then be sure to raise this issue when responding to a non-final rejection to have your arguments submitted on the record.

Case Background

The claims in US Patent Application No. 12/364,470 (the ’470 application) describe an electronic device with a user interface that allows a user to move application icons by touching one of the icons for a long period of time. The examiner rejected the pending claims in the ‘470 application under an obviousness rejection of two references: Hawkins (US Patent No. 7,231,229) and Gillespie (US Pub. No. 02/0191059). Hawkins describes entering an editing mode to rearrange buttons on a user interface, while Gillespie describes activation of an icon by holding a finger on the icon for a sustained duration of time.

Van Os and the other inventors of the ’470 application appealed to the PTAB, which affirmed the examiner’s rejection. The Federal Circuit vacated the PTAB’s holding because both the examiner and the PTAB failed to provide a reason as to why a person of ordinary skill in the art would have been led to combine Hawkins and Gillespie.

Decision Analysis

In KSR Int’l Co. v. Teleflex Inc., the Federal Circuit held that a factfinder can use “common sense” and “creativity” of a person of ordinary skill in the art in assessing motivation to combine elements from prior art references; however, the factfinder is obligated to prove a reasoned, explicit analysis. Since KSR, the Federal Circuit has maintained that saying it would be “common sense” for a person of ordinary skill to combine references is insufficient because it is the same as stating that the combination of references would have been obvious.

The examiner, in rejecting the claims of the ’470 application, stated “[o]ne of ordinary skill in the art would have recognized that Gillespie’s technique of entering a user interface reconfiguration mode … would be an intuitive way for users of Hawkins’ device to enter in the editing mode in which they could rearrange the icons.” The PTAB applied the examiner’s reasoning in its decision. The Federal Circuit, applying KSR, asserted that both the examiner’s and PTAB’s reasoning did not identify a motivation to combine Hawkins and Gillespie.

Takeaways

During patent prosecution, note whether the examiner provides an explicit and clear rationale for combining references in an obviousness rejection. If there are conclusory statements, then the examiner has likely not met his or her obligation, and you should consider providing arguments in a response.

For rejections where you are considering appeal, it is important to raise your arguments in response to a non-final rejection to place them on record for the appeal.

Wolf Greenfield's CAFC Blog

Here, Wolf Greenfield attorneys summarize and identify key takeaways from recent patent law cases decided by the U.S. Court of Appeals for the Federal Circuit. View past case summaries here.

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This blog is intended to promote thought and debate on developing areas of the law. The opinions, commentary and characterizations of cases provided on this blog are not legal advice and do not represent the opinions of Wolf Greenfield or its clients.