United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: MARCEL VAN OS, FREDDY ALLEN 

ANZURES, SCOTT FORSTALL, GREG CHRISTIE, 

IMRAN CHAUDHRI,

Appellants

______________________ 

2015-1975

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 12/364,470.

______________________ 

Decided: January 3, 2017

______________________ 

E. JOSHUA ROSENKRANZ, Orrick, Herrington & Sutcliffe LLP, New York, NY, argued for appellants. Also 

represented by CHRISTOPHER J. CARIELLO; MARK S.

DAVIES, Washington, DC; BRIAN B. HO, PETER J. YIM, 

Morrison & Foerster LLP, San Francisco, CA.

 BRIAN RACILLA, Office of the Solicitor, United States 

Patent and Trademark Office, Alexandria, VA, argued for

appellee Michelle K. Lee. Also represented by THOMAS W.

KRAUSE, PHILIP J. WARRICK. 

______________________ 

Before NEWMAN, MOORE, and WALLACH, Circuit Judges.

Opinion for the court filed by Circuit Judge MOORE. 
2 IN RE: VAN OS

Opinion concurring in part and dissenting in part filed by 

Circuit Judge NEWMAN. 

MOORE, Circuit Judge. 

Appellants Marcel Van Os and other inventors at Apple Inc. (collectively, “Van Os”) appeal from a decision of 

the Patent Trial and Appeal Board (“Board”) affirming the 

examiner’s rejection of claims 38–41 of U.S. Patent Application No. 12/364,470 (“the ’470 application”). For the 

reasons discussed below, we vacate and remand. 

BACKGROUND

The ’470 application is directed to a touchscreen 

interface in a portable electronic device that allows a user 

to rearrange icons. Claims 38 and 40, the only independent claims at issue, both recite the initiation of an “interface reconfiguration mode” to permit icon rearrangement. 

Claim 38 distinguishes among a “first user touch” to open 

an application, a longer “second user touch” to initiate the 

interface reconfiguration mode, and a “subsequent user 

movement” to move an icon. Claim 40 does not recite a 

touch to open an application, but recites that its “first 

user touch of at least an established duration” initiates

the interface reconfiguration mode and allows movement 

of an icon “in the absence of a further user input.”

The Board reversed the examiner’s rejection of twenty-nine claims but affirmed that claims 38–41 would have 

been obvious over U.S. Patent No. 7,231,229 (“Hawkins”) 

and U.S. Pub. No. 02/0191059 (“Gillespie”). Hawkins 

discloses a personal communication device with a touchsensitive screen. It teaches that an “Edit Favorites Button” can be selected from a menu or keyboard command 

for “performing button 701 configuration and/or editing,” 

and that “a user can rearrange buttons 701 by dragging 

button 701 from one location to another . . . .” Gillespie 

discloses an interface on a computer touch pad with an 

unactivated and activated state. It discloses that in the 
IN RE: VAN OS 3

activated state, icons are functional and can be removed 

or rearranged. It teaches that an individual icon could be 

“activated” by various means, such as touching an icon 

with multiple fingers or with rapid double taps, hovering 

the finger over an icon without touching the touch screen, 

or holding the finger on an icon for a sustained duration,

whereas “single taps near an icon could be interpreted as 

normal mouse clicks.”

The examiner found Hawkins discloses each limitation of claim 38, but “does not explicitly 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.” 

J.A. 2063–64. To satisfy this limitation, the examiner 

relied on Gillespie’s disclosure of a sustained touch and 

reasoned adding this feature to Hawkins “would be an 

intuitive way for users of Hawkins’ device to enter into 

the editing mode.” J.A. 2064. He found claim 40 to be 

“substantially the same” and rejected it on the same 

basis. Id. 

The Board incorporated the examiner’s analysis and

concluded the examiner did not err in holding that 

claims 38 and 40, and dependent claims 39 and 41, would 

have been obvious over a combination of Hawkins and 

Gillespie. Van Os timely appealed. We have jurisdiction 

under 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

We review the Board’s factual determinations for 

substantial evidence and its legal determinations de novo. 

Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. 

Cir. 2015). Obviousness is a question of law based on 

subsidiary findings of fact. Id. Whether a person of 

ordinary skill in the art would have been motivated to 

modify or combine prior art is a question of fact. Id.
4 IN RE: VAN OS

The Board’s conclusion that claims 38–41 of the 

’470 application would have been obvious hinges on its 

finding that a person of ordinary skill in the art would 

have been motivated to modify Hawkins’ initiation of an 

editing mode via menu selection or keyboard command 

with Gillespie’s disclosure of a sustained touch, “holding 

the finger steady over an icon for a given duration” to 

“activate” an icon. Specifically, the Board found, without 

further discussion, that the combination of Gillespie with 

Hawkins would have been “intuitive.”

In KSR, the Supreme Court criticized “[r]igid preventative rules that deny factfinders recourse to common 

sense” when determining whether there would have been 

a motivation to combine prior art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). The proper approach, 

as explained in KSR, credits the common sense and 

creativity of a skilled artisan to assess whether there 

would have been a motivation to combine elements from 

prior art references in the manner claimed. Id. at 418–21. 

But the flexibility afforded by KSR did not extinguish the 

factfinder’s obligation to provide reasoned analysis. 

Instead, KSR specifically instructs that when determining 

whether there would have been a motivation to combine, 

the “analysis should be made explicit.” Id. at 418. 

Since KSR, we have repeatedly explained that obviousness findings “grounded in ‘common sense’ must 

contain explicit and clear reasoning providing some 

rational underpinning why common sense compels a 

finding of obviousness.” Plantronics, Inc. v. Aliph, Inc., 

724 F.3d 1343, 1354 (Fed. Cir. 2013) (citation omitted); see 

also Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362

(Fed. Cir. 2016) (“[R]eferences to ‘common sense’ . . . 

cannot be used as a wholesale substitute for reasoned 

analysis and evidentiary support . . . .”); Randall Mfg. v. 

Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (“In recognizing 

the role of common knowledge and common sense, we 

have emphasized the importance of a factual foundation 
IN RE: VAN OS 5

to support a party’s claim about what one of ordinary skill 

in the relevant art would have known.”); Mintz v. Dietz & 

Watson, 679 F.3d 1372, 1377 (Fed. Cir. 2012) (“The mere 

recitation of the words ‘common sense’ without any support adds nothing to the obviousness question.”); Perfect 

Web Techs. Inc. v. InfoUSA Inc., 587 F.3d 1324, 1330 

(Fed. Cir. 2009) (“[T]o invoke ‘common sense’ or any other 

basis for extrapolating from prior art to a conclusion of 

obviousness, [the factfinder] must articulate its reasoning 

with sufficient clarity for review.”). Even before KSR, we 

explained that while the Board may rely on common 

sense, it must “explain why ‘common sense’ of an ordinary 

artisan seeking to solve the problem at hand would have 

led him to combine the references.” DyStar Textilfarben 

GmbH & Co. v. C.H. Patrick Co., 464 F.3d 1356, 1366–67 

(Fed. Cir. 2006). 

Absent some articulated rationale, a finding that a 

combination of prior art would have been “common sense” 

or “intuitive” is no different than merely stating the 

combination “would have been obvious.” Such a conclusory assertion with no explanation is inadequate to support 

a finding that there would have been a motivation to 

combine. This type of finding, without more, tracks the ex 

post reasoning KSR warned of and fails to identify any 

actual reason why a skilled artisan would have combined 

the elements in the manner claimed. See 550 U.S. at 418, 

421.

Here, neither the Board nor the examiner provided 

any reasoning or analysis to support finding a motivation 

to add Gillespie’s disclosure to Hawkins beyond stating it 

would have been an “intuitive way” to initiate Hawkins’ 

editing mode. The Board did not explain why modifying 

Hawkins with the specific disclosure in Gillespie would 

have been “intuitive” or otherwise identify a motivation to 

combine. “The agency tribunal must make findings of 

relevant facts, and present its reasoning in sufficient 

detail that the court may conduct meaningful review of 
6 IN RE: VAN OS

the agency action.” In re Lee, 277 F.3d 1338, 1346 (Fed. 

Cir. 2002) (vacating the Board’s obviousness determination and remanding for the Board to “set forth the findings and explanations needed for ‘reasoned 

decisionmaking’”); see also Power Integrations, Inc. v. Lee, 

797 F.3d 1318, 1327 (Fed. Cir. 2015) (vacating the Board’s 

anticipation determination and instructing the Board on 

remand to “set[] out its reasoning in sufficient detail to 

permit meaningful appellate review”); In re NuVasive, 

No. 15-1670, 2016 WL 7118526, at *6 (Fed. Cir. Dec. 7, 

2016) (vacating the Board’s decision and remanding “for 

additional explanation of the PTAB’s findings”). As in In 

re Lee, Power Integrations, and NuVasive, when the 

Board’s action is “potentially lawful but insufficiently or 

inappropriately explained,” we have consistently vacated 

and remanded for further proceedings. See In re Lee, 277 

F.3d at 1346 (internal quotation marks and citations 

omitted). For these reasons, the Board’s holding that 

claims 38–41 of the ’470 application would have been 

obvious is vacated and remanded. 

VACATED AND REMANDED

COSTS

Costs to Appellants. 
United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: MARCEL VAN OS, FREDDY ALLEN 

ANZURES, SCOTT FORSTALL, GREG CHRISTIE, 

IMRAN CHAUDHRI,

Appellants

______________________ 

2015-1975

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 12/364,470.

______________________ 

NEWMAN, Circuit Judge, concurring in part, dissenting in 

part.

I agree that the bare recitation by the Board and examiner that it would have been “intuitive” to combine the 

disclosures of the Gillespie and Hawkins references is 

inadequate to support a ruling of obviousness. I write 

separately because 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, 

Apple is “entitled to a patent.” 35 U.S.C. § 102(a). That 

ends the examination procedure. 

In examination appeals, the PTO and the PTAB are 

not neutral arbiters; they bear the burden of establishing

unpatentability. This is a critical difference between an 

examination appeal and the new post-grant AIA procedures. On examination, the statute provides: “A person 
2 IN RE: VAN OS

shall be entitled to a patent unless—.” 35 U.S.C. 102(a). 

Thus the burden of establishing unpatentability rests 

with the PTO during examination. If the PTO fails to 

carry that burden, by statute the applicant is “entitled to 

a patent.” Our predecessor court explained:

The Patent Office has the initial duty of supplying 

the factual basis for its rejection. It may not, because it may doubt that the invention is patentable, resort to speculation, unfounded assumptions 

or hindsight reconstruction to supply deficiencies 

in its factual basis.

Application of Warner, 379 F.2d 1011, 1017 (CCPA 1967). 

When the Patent Office, as it did here, relies on the 

“naked invocation of skill in the art to supply a suggestion 

to combine the references,” with no adequate explanation, 

reasoning, or analysis, the statutorily required result is 

reversal. In re Rouffet, 149 F.3d 1350, 1359 (Fed. Cir. 

1998) (“Absent any proper motivation to combine part of 

Levine’s teachings with Freeburg’s satellite system, the 

rejection of Rouffet’s claim over these references was 

improper and is reversed.”); see also In re Oetiker, 977 

F.2d 1443, 1445 (Fed. Cir. 1992) (reversing for “improperly combined” references, because “[i]f examination at the 

initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled 

to grant of the patent”) (internal citation omitted)). 

The panel majority describes the Board’s reasoning as 

“potentially lawful but insufficiently or inappropriately 

explained,” as contrasted with “so crippled as to be unlawful.” In re Lee, 277 F.3d 1338, 1346 (Fed. Cir. 2002)

(internal citations omitted). Although this distinction 

may be a “fine line,” id., for the Van Os application the 

Board’s reasoning does not come close to “potentially 

lawful” reasoning, unlike the examples cited by the majority. The facts herein are much closer to those of Arendi 

S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1366 (Fed. Cir. 
IN RE: VAN OS 3

2016) (reversing, in an inter partes review, because “this is 

not a case where a more reasoned explanation than that 

provided by the Board can be gleaned from the record”).

Unlike the facts of In re Lee, the issue here is not a 

lack of specificity or absence of citation to the record or to 

legal authority. Lee, 277 F.3d at 1343–44 (remanding for 

further explanation when examiner’s suggested motivations to combine lacked “specificity” and were based on 

“unknown authority”). Nor is the Van Os application 

defective simply due to incorrect construction of a claim 

term, as in Power Integrations, Inc. v. Lee, 797 F.3d 1318, 

1325–26 (Fed. Cir. 2015) (“Because we vacate the Board’s 

construction of the ‘coupled’ limitation in claim 1, we 

likewise vacate and remand its anticipation rejections of 

claims 17, 18, and 19.”).

Instead, the Board and the examiner, without citation 

or explanation, justified the combination of Gillespie’s 

sustained touch on a computer mousepad to initiate the 

editing menu on Hawkins’ portable electronic device. The 

Board’s statement that it would have been “intuitive” to 

combine the two is not a legally sufficient explanation. 

Neither the examiner nor the Board met the statutorily 

required burden of demonstrating unpatentability, although they had full opportunity to do so. This lack of 

reasoning is “so crippled as to be unlawful.” Lee, 277 F.3d 

at 1346.

On our recognition and affirmation that the PTO 

failed to meet its statutory burden, the appropriate remedy is to instruct that the claims be allowed and the patent 

granted.