In Re: Van Os, 844 F.3d 1359

The ’470 patent application (Apple inventors, Van Os) claims a touchscreen interface reconfiguration mode allowing icon rearrangement; claims 38 and 40 are the independent claims at issue.
Claim 38 distinguishes a short first touch to open an app, a longer second touch to enter reconfiguration mode, and subsequent movement to reposition an icon; claim 40 requires a first touch of established duration that enables icon movement without further input.
Examiner rejected claims 38–41 as obvious over Hawkins (U.S. Patent No. 7,231,229) combined with Gillespie (U.S. Pub. No. 2002/0191059): Hawkins showed menu/keyboard-initiated editing and icon dragging; Gillespie taught activating icons via sustained touch or other gestures.
The Board affirmed the obviousness rejection for claims 38–41, adopting the examiner’s view that adding Gillespie’s sustained-touch activation to Hawkins would be an “intuitive” modification to enter editing mode.
The Federal Circuit vacated and remanded, holding the Board’s conclusory “intuitive”/“common sense” assertion lacked the required reasoned, fact-based rationale showing a motivation to combine the references.
Judge Newman concurred in part and dissented in part: agreed reasoning was inadequate but argued remand was improper in an examination appeal because the PTO bore the burden to prove unpatentability and failure to do so requires reversal and allowance.

Issue	Plaintiff's Argument (Van Os)	Defendant's Argument (PTO/Board)	Held
Whether claims 38–41 are obvious over Hawkins + Gillespie	Claims require a sustained-touch trigger distinct from tap-to-open; combination not shown by prior art	Combining Gillespie’s sustained-touch activation with Hawkins’ editing mode would have been intuitive/common sense, so claims are obvious	Vacated Board’s obviousness holding for lack of articulated reasoning and remanded for further explanation
Whether the Board’s reliance on “common sense” suffices	Contends board must provide reasoned analysis, not conclusory labels	Board treated common-sense intuition as sufficient motivation to combine	Court held that invoking “intuitive/common sense” without explicit rationale is inadequate
Standard/remedy when PTO fails to justify rejection in an examination appeal	PTO failed to meet burden; applicant entitled to patent per statute (per Newman)	PTO argues remand for further fact-finding is appropriate	Majority: remand for further explanation; Newman: reversal and allowance because PTO failed its burden
Adequacy of factual findings to permit appellate review	Need for articulated factual rationale showing motivation to combine	Examiner/Board provided minimal factual support, mostly conclusory	Court required detailed factual reasoning; vacated and remanded for articulation

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (explains need for explicit analysis when invoking common sense in obviousness)
Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343 (requires explicit rational underpinning when relying on common sense)
Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (cannot use ‘common sense’ as wholesale substitute for reasoned analysis)
In re Lee, 277 F.3d 1338 (vacatur/remand when agency’s reasoning is insufficient for meaningful review)
Power Integrations, Inc. v. Lee, 797 F.3d 1318 (agency must set out reasoning in sufficient detail)
In re NuVasive, 842 F.3d 1376 (vacatur and remand for additional explanation of PTAB findings)
Application of Warner, 379 F.2d 1011 (PTO must supply factual basis for rejections; no speculation or hindsight)
In re Rouffet, 149 F.3d 1350 (reversal where PTO’s motivation-to-combine was a naked invocation of skill in the art)
In re Oetiker, 977 F.2d 1443 (if initial examination fails to produce a prima facie case, applicant is entitled to grant)