Is there a difference between saying that it would be intuitive to use the features of one prior art reference in combination with another, versus saying that such a combination merely uses a prior art element for its established function? According to two recent decisions, the Federal Circuit apparently thinks so.

In In re: Van Os, Case No. 2015-1975 (January 3, 2017), the Court reversed and remanded the Board’s finding of obviousness, rejecting the Board’s conclusion that the combination of prior art references would have been “intuitive.” The case concerned an appeal of the Board’s decision to sustain the patent examiner’s rejection of Apple’s U.S. Patent Application No. 12/364,470 directed to a touchscreen interface in a portable electronic device that allowed a user to rearrange icons on a display. Specifically, the claimed methods reciting using the duration of the user’s contact with the icon on the screen to determine the behavior of the system—a brief touch would launch the application, while a longer touch would be interpreted as an election to reposition the icon on the screen.  The PTAB concluded that the claims were obvious in light of two prior art references. The primary reference disclosed the reconfiguration of icons on a touchscreen using a separate edit button.  The secondary reference taught the use of various means to “activate” icons for editing, such as touching an icon with multiple fingers or with rapid double taps, hovering the finger over an icon without touching the screen, or holding the finger on the icon for a sustained duration. The Board agreed with the examiner that adding the sustained touch feature of the second reference “would be an intuitive way for users of [the primary prior art] device to enter into editing mode.” The Federal Circuit rejected the Board’s conclusion, explaining 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.” The Board’s decision, according to the Federal Circuit, failed to provide any such reasoned analysis and the case was remanded in view of this finding. Judge Newman concurred in the determination that the Board’s obviousness decision was not supported but dissented with regard to remand. She found that, because of the Board’s failure to support a finding of obviousness, the applicant is entitled to a patent and the appropriate remedy is to allow the claims and grant the requested patent.

In contrast, in In re Ethicon, Inc., Case No. 2015-1696 (January 3, 2017), the Court affirmed the Board’s decision to cancel claims as obvious in two consolidated IPRs filed by Abbott Laboratories and Boston Scientific SCIMED.  The IPRs challenged claims of U.S. Patent 7,591,844, directed to drug coated stents made of a particular copolymer In declaring the challenged claims unpatentable, the Board had relied upon three prior art references in finding the claims obvious. The primary reference disclosed a stent with a drug coating.  It did not, however, disclose use of the specific copolymer used in the challenged claims. A secondary reference disclosed use of the copolymer in implantable medical devices (but not in stents) that were drug coated.  A further secondary reference disclosed the copolymer having the specific weight ratios of the challenged claims, describing the properties of such a copolymer. The Board had concluded that “one of ordinary skill in the art would have found it obvious to have employed the known polymers of Tu and Lo for their known and expected properties” and thus, the “reason to combine [the references] could be provided by the ‘normal desire of scientists or artisans to improve upon what is already generally known.” On appeal, Ethicon disputed the Board’s conclusions that one of ordinary skill in the art would have been so motivated to combine such non-analogous references. The Federal Circuit was not persuaded, finding the claimed improvement to be nothing more than the predictable use of prior art elements according to their established functions.  The Federal Circuit declared that no explicit teaching, suggestion, or motivation to combine was necessary in these circumstances. Judge Newman dissented, but in this case disagreeing with the substantive obviousness determination. Judge Newman was persuaded both that Ethicon had presented sufficient evidence of secondary considerations of non-obviousness and that the Board erred in collecting the elements of the ’844 patent from assorted sources and placing them in the template of the ’844 claims. She cited KSR’s admonition that “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was independently known in the art.

In my view, although the analysis of the Board in the Ethicon decision addressed additional issues not raised the Van Os decision, the basis for combining the prior art references appears to be the same. I theorize that because Van Os dealt with a more easily described element—pressing an icon for a set period of time rather than the specific weight ratio of a polymer selected for use in a stent device—the Board may have believed it needed to spend less effort explaining why one of skill in the art would have been inclined to use that feature in an electronic device with icons. Regardless of the reason, I find these decisions hard to reconcile.