  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 & Sut-
cliffe 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 Ap-
ple 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 Appli-
cation 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 independ-
ent claims at issue, both recite the initiation of an “inter-
face 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 twen-
ty-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 touch-
sensitive screen. It teaches that an “Edit Favorites But-
ton” 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 limita-
tion 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 preven-
tative 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. Tele-
flex 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 obvi-
ousness 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 sup-
port 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 concluso-
ry 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 determina-
tion and remanding for the Board to “set forth the find-
ings    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 ex-
aminer 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 affir-
mance 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 proce-
dures. 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, be-
    cause it may doubt that the invention is patenta-
    ble, 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 “improper-
ly combined” references, because “[i]f examination at the
initial stage does not produce a prima facie case of un-
patentability, 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 unlaw-
ful.” 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 major-
ity. 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 motiva-
tions 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, alt-
hough 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 reme-
dy is to instruct that the claims be allowed and the patent
granted.
