Credit: Wachiwit/Shutterstock.com

Apple Inc. has won at least a moral victory in a fight with the U.S. Patent and Trademark Office over touchscreen technology.

The U.S. Court of Appeals for the Federal Circuit agreed with Apple on Tuesday that the patent office failed to sufficiently explain why Apple’s method for reconfiguring touchscreen icons is unpatentable due to obviousness.

Apple applied for a patent in 2009 on its method of using a sustained touch to activate an icon, which then allows a person to drag the icon to a new location on the screen. A patent examiner found the claim obvious in light of separate prior inventions on sustained touch and dragging. Combining the two inventions “would be an intuitive way” to rearrange touchscreen icons, the examiner concluded and the Patent Trial and Appeal Board affirmed.


Mark S. Davies.Photo: Gittings Photography

Apple and its appellate counsel at Orrick, Herrington & Sutcliffe argued that the claims are not obvious—or at the very least that the PTO should have to provide a more reasoned explanation. “Regardless of whether the court agrees with Apple on the merits, the conclusory quality of the PTAB’s ruling here warrants comment from this court,” partners E. Joshua Rosenkranz and Mark Davies argued in Apple’s brief.

The Federal Circuit agreed in In re Van Os. “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,’” Judge Kimberly Moore wrote. “Such a conclusory assertion with no explanation is inadequate to support a finding that there would have been a motivation to combine.”

Moore ordered the case sent back to the PTO for reconsideration. Judge Evan Wallach concurred. Judge Pauline Newman dissented, saying the PTO should not get a do-over. “On our affirmance that the PTO has not established unpatentability, Apple is ‘entitled to a patent,’” she wrote.

Apple’s win in Van Os follows a similar decision last summer, In re Lemay, in which the Federal Circuit found no evidence supporting the PTO’s decision to refuse Apple a patent on streaming video display menus. In that case the court fully reversed the PTAB’s decision.

Contact the reporter at sgraham@alm.com.