United States: PTAB, Explain Yourself! Federal Circuit Scrutinizes Articulated Rationales At The Patent Office

Despite the high bar for appellants to contest the adequacy of articulated reasoning for agency action by the Patent Trial and Appeal Board, the last few months brought several Federal Circuit decisions enforcing these procedural decision-making requirements on the PTAB and reinforcing the need for the PTAB to adequately explain its evidentiary findings and legal conclusions.

As an administrative agency, the United States Patent and Trademark Office enjoys broad discretion in its decision-making. Its evidentiary findings need only be supported by substantial evidence, and it must articulate its rationale in reaching its conclusions from the evidence.

These standards are not high. In In re Kotzab, the court held that "Substantial evidence is something less than the weight of the evidence but more than a mere scintilla of evidence." This standard requires only "such relevant evidence as a reasonable mind might accept as adequate to support a conclusion," according to the court in In re Applied Materials. "Less than the weight of the evidence" that "a reasonable mind 'might' accept" do not inspire confidence in an appellant.

Typically, final and reviewable decisions by the USPTO are appealed to the PTAB, in either contested proceedings or in ex parte patent examination appeals. Even when the PTAB does not clearly explain itself, such decisions may still be upheld by the Federal Circuit when "we may reasonably discern that it followed a proper path, even if that path is less than perfectly clear," according to the court's decision in Ariosa Diagnostics v. Verinata Health.

The sufficiency of the PTAB's explanation is perhaps most keenly felt when patent claims are rejected as obvious. When rejecting claims as obvious, the PTAB must identify a reason that a person of ordinary skill in the art would have modified the references to yield the claimed invention. Under KSR International v. Teleflex, this inquiry is a flexible one that may rely on "common sense." To patent applicants and patentees, this "common sense" can appear to be license for the PTAB to apply loose hindsight and conjecture.

In In re Nuvasive, the Federal Circuit remanded the PTAB's decision in an inter partes review for failing to adequately articulate a motivation to combine two references. The court emphasized the need for adequate articulation of agency action and that adequate review by the court requires articulation of a motivation to combine when contested. The court identified three common situations in which the motivation to combine is insufficiently articulated: (1) a conclusory statement of a motivation unsupported by articulated reasoning; (2) a summary of competing arguments and rejection or acceptance thereof without explaining why the prevailing argument is accepted; and (3) a sole reliance on "common sense" as a reason to combine, without an analysis of how common sense applies. In Nuvasive, the Federal Circuit reversed because the PTAB had summarized arguments of the parties, but "the PTAB never actually made an explanation-supported finding that the evidence affirmatively proved that the PHOSITA [i.e., person having ordinary skill in the art] would have sought [information that would lead a skilled artisan to make the combination]."

Additional recent cases follow suit. In In re Van Os, the Federal Circuit remanded in an ex parte patent application appeal. The PTAB had found that the combination of two user-interface techniques would have been "intuitive." Citing Nuvasive, the Federal Circuit reversed because "intuitive," without more, effectively becomes a replacement for "common sense" and does not meaningfully differ from a conclusory statement that the combination would have been obvious.

In Personal Web Technologies v. Apple, the court remanded in an inter partes review. Emphasizing reviewability and principles of agency law, the Federal Circuit initially emphasized the need for a clear record. It clarified that the PTAB's reasoning that a skilled artisan "would have understood that the combination... would have allowed for [a combination of features]" was insufficient (emphasis in original). Rather, the court emphasized that the requirement is not whether one "could have" combined references, but instead requires a reasoning of why those two references would be selected and combined to reach the claimed invention.

The Federal Circuit has also remanded when the PTAB articulated none of its own reasoning. In Icon Health and Fitness v. Strava, on appeal from an inter partes re-examination, the court remanded to the PTAB some patent claims and affirmed others based solely on the adequacy of the PTAB's articulated evidence and reasoning. With respect to some claims, the PTAB stated it had addressed certain arguments "as discussed above." It had not. Nonetheless, the Federal Circuit still evaluated support in the record based on the PTAB's general statement that for any unaddressed issues, it agreed with the appellee and the underlying examiner. For certain of these claims, however, the examiner made no findings and instead incorporated by reference the arguments of the appellee Strava. The Federal Circuit dismissed these as providing no support because "[a]ttorney argument is not evidence," and the incorporation by reference did not transform the argument into factual findings or required explanation. Accordingly, for some claims, neither the PTAB nor the examiner had made particular findings, and those claims were remanded. For other claims, in which the examiner did provide an explanation separate from attorney argument, the Federal Circuit affirmed.

Unfortunately for the owners in these various cases, the remedies in these actions were to remand to the PTAB to provide an adequate rationale for its decision, rather than a reversal. In both Van Os and Icon Health, however, Judges Newman and O'Malley, respectively, wrote separately to support reversal rather than remand because in examination proceedings, the USPTO has the obligation to establish unpatentability. Thus, when unpatentability has been insufficiently established, they argue, the remedy should be a granted patent. This issue may continue to simmer and invite en banc consideration.

Typically, contesting "motivation to combine" is a challenging proposition for patent owners and patent applicants. The flexible inquiry lends itself to hindsight reasoning that can be difficult to clearly challenge. Together, these cases revitalize the requirement that these considerations be clearly articulated and flow from support in the record in both contested proceeding and ex parte appeals. To many applicants, contesting "motivation to combine" is a difficult burden that often appears challenging to appeal at the examiner level because of its nuanced flexibility.

These cases suggest that applicants should do so more often. Because examiners are expected to perform "compact prosecution," examiners must examine an application for all conditions of patentability (and make corresponding rejections) at each office action and are expected to bring forward the best available references in a rejection. See 37 C.F.R. 1.104(a)(1). As a result, when an examiner is reversed, an examiner "should never regard such a reversal as a challenge to make a new search to uncover other and better references" and, when the examiner has specific knowledge of such references, may reopen prosecution only with technology center director approval. See Manual of Patent Examining Procedure (M.P.E.P.) § 1214.04. Thus, should the PTAB follow these cases and reverse an examiner's improperly articulated motivation to combine, the applicant typically can expect a patent rather than a further search and articulation by the examiner.

As discussed in the Quick Update below, while the Federal Circuit has recently enforced the need for the USPTO to articulate its rationales as an administrative agency, the Federal Circuit itself has increasingly declined to articulate its own rationales by issuing summary affirmances without opinion.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
2 Dec 2019, Speaking Engagement, San Francisco, United States

With the revenue and lease standards in the rear-view mirror but CECL still to be adopted, it is as important as ever to keep up with new and evolving accounting standards and regulations especially given the SEC’s Disclosure Modernization and Simplification initiatives.

5 Dec 2019, Conference, San Francisco, United States

This is NELI's most comprehensive two day advanced-level conference addressing critical developments affecting employment policies and practices of business and government.

11 Dec 2019, Other, Los Angeles, United States

Fenwick counsel Robert Brownstone will be lead chair in this highly interactive colloquium providing a deep understanding and practical advice regarding major e-discovery challenges facing organizations today.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions