In Re: Black ( 2019 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: JEREMY BLACK, PATRICK H. HAYES,
Appellants
______________________
2018-1166
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 13/542,146.
______________________
Decided: July 8, 2019
______________________
JAMES J. LUKAS, JR., Greenberg Traurig, LLP, Chicago,
IL, argued for appellants. Also represented by GARY R.
JAROSIK, MATTHEW J. LEVINSTEIN, SARA MASON SKULMAN.
JOSEPH GERARD PICCOLO, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, ar-
gued for appellee Andrei Iancu. Also represented by
THOMAS W. KRAUSE, ROBERT MCBRIDE.
______________________
Before LOURIE, O’MALLEY, and REYNA, Circuit Judges.
Opinion for the court filed by Circuit Judge REYNA.
Dissenting opinion filed by Circuit Judge O’MALLEY.
2 IN RE: BLACK
REYNA, Circuit Judge.
Jeremy Black and Patrick Hayes appeal from the deci-
sion of the U.S. Patent Trial and Appeal Board affirming
the rejection of claims 1 and 3–15 of their patent applica-
tion. Because substantial evidence supports the U.S. Pa-
tent Trial and Appeal Board’s factual findings relating to
its obviousness analysis, we affirm.
BACKGROUND
A. The ’146 Application
Jeremy Black and Patrick Hayes (“Applicants” or “Ap-
pellants”) filed U.S. Patent App. No. 13/542,146 (“the ’146
application”), which is generally directed to “adapting var-
ious appliance control capabilities of a universal remote
control system such that they may be ubiquitously accessed
by personal communication devices within a wireless net-
work.” J.A. 100. Stated differently, the ’146 application is
directed to a system where personal communication de-
vices, such as cell phones, can access a universal remote
control to control other devices.
An exemplary embodiment of the ’146 application is de-
picted below in Figure 4a.
IN RE: BLACK 3
’146 application, Figure 4a.
Figure 4a shows a wireless network as a means for
communicating between personal communication devices
and controllable appliances such as televisions and cable
set-top boxes by way of a slave relay device. The ’146 ap-
plication states that “slave relay devices 100 and 100’ . . .
are also capable of serving HTML-formatted pages over lo-
cal area network 406 as requested by browser-capable de-
vices such as personal communications devices 400 or 402,
thereby allowing such devices to be used as surrogate or
additional universal controlling devices.” J.A. 107.
4 IN RE: BLACK
The principal issue on appeal is whether the prior art
discloses a tag file that includes both the definition of a con-
trollable device and command data to be transmitted to the
controllable device, as required by the claims of the ’146
application. Claim 1, the only independent claim in the ’146
application, is illustrative:
1. A slave relay station in communication with a
personal communication device via a network, the
slave relay station having a processing device and
a non-transitory computer readable media on
which are stored instructions which, when exe-
cuted by the processing device, cause the slave re-
lay station to perform steps for controlling a
controllable device, comprising:
causing a graphical user interface page to be
provided to the personal communication de-
vice, the graphical user interface page having
an activatable link that is associated with a tag
file, the tag file comprising both a definition of
the controllable device and a listing of one or
more commands to be transmitted to the con-
trollable device;
receiving from the personal communication de-
vice via the network a request, the request con-
taining data that functions to indicate that the
activatable link of the graphical user interface
page was selected; and
in response to receiving the request, executing
the tag file whereupon a communication proto-
col corresponding to the definition of the con-
trollable device contained in the tag file
associated with the activatable link is used to
transmit directly to the controllable device the
one or more commands contained in the tag file
associated with the activatable link;
IN RE: BLACK 5
wherein the data that functions to indicate that
the activatable link of the graphical user inter-
face was selected comprises data that is usable
by the instructions to select from a plurality of
tag files that have been associated with a cor-
responding plurality of activatable links of the
graphical user interface page the tag file that
is to be executed.
J.A. 192 (emphases added). The emphasized language rep-
resents the “tag file limitation” that is central to the dis-
pute on appeal.
B. Procedural History
On June 5, 2015, the Examiner issued a final rejection
of all pending claims of the ’146 application. J.A. 163–64.
The Examiner rejected claims 1 and 3–15 in light of a com-
bination of U.S. Patent No. 7,631,197 by Niwamoto (“Niwa-
moto”); 1 U.S. Patent Application Publication
US 2005/0097618 by Arling (“Arling”); and U.S. Patent Ap-
plication Publication US 2003/0095211 by Nakajima
(“Nakajima”). J.A. 164–75. Applicants subsequently ap-
pealed to the U.S. Patent Trial and Appeal Board (“Board”).
The Board affirmed the Examiner’s rejection in its De-
cision on Appeal. J.A. 7–16. In affirming, the Board relied
on the reasoning, findings, and conclusions of the Exam-
iner. The Board also construed the term “tag file” as “a
data structure that defines the action to be taken by the
slave relay station, such as the command to be transmitted
to a controllable device, upon receipt of a control command
(e.g., activation of an HTML tag) from a client/control de-
vice.” J.A. 10, 12. The Board further concluded that Arling
1 Niwamoto is not relevant to the tag file limitation
at dispute on appeal. Therefore, we do not address it here.
6 IN RE: BLACK
in combination with Nakajima teaches the tag file limita-
tion.
The Arling reference is generally directed “to control-
ling home appliances and, more particularly, relates to a
system and method for allowing a user to save, recall, and
transfer both media playback and device setting states for
one or more sets of home appliances.” Arling ¶ 2. The
Board relied on the disclosure in paragraph 30, provided
below, to conclude that Arling “teaches a data structure
that defines the command to be transmitted to a controlla-
ble device, upon activation of a tag at a control device.”
J.A. 14. Paragraph 30 corresponds to Figure 1, also pro-
vided below.
[C]orresponding data elements for source appli-
ances 12a that may be saved for subsequent com-
mand generation, conversion and/or playback
include TV related data 122a (e.g., channel, bright-
ness, contrast, etc.), receiver data 121a (e.g., mode,
volume, surround state, etc.), and networked appli-
ance data 123a (e.g., media source, output, media
playback position, etc.). The data elements 121a,
122a, and 123a may be saved in any known format,
for example as an XML file (e.g., as contemplated
by the UPnP specification), or spreadsheet/data-
base entries on central state server 14, such that
further operations as described below may be per-
formed on the data. Once saved in the central state
server 14 (or on remote control 10 and/or any other
appliance 12), data set 132 may be used to generate
command data (i.e., IR or RF based appliance com-
mands) which may then be assigned as a macro
command or other immediately available command
set on remote control 10 for use by a user in effecting
recall of the device and media states on source ap-
pliance set 12a.
IN RE: BLACK 7
J.A. 14 (quoting Arling ¶ 30) (emphasis in Board Decision).
Arling, Figure 1.
Nakajima is directed to “a field extensible, controllee
sourced universal remote control method and apparatus for
remotely controlling electronic devices, such as a television
(TV), set-top box, video cassette recorder (VCR), digital ver-
satile disk (DVD) player, and so forth.” Nakajima ¶ 1. The
Board cited paragraph 51 of Nakajima as teaching the tag
file limitation of the ’146 application in conjunction with
Arling. Nakajima discloses
[S]ystem memory 604 and mass storage 606 are
employed to store a working copy and a permanent
copy of the programming instructions implement-
ing the earlier described functions of TV 102, i.e.
acceptance of control end user interface specifica-
tions from auxiliary devices 104–108, generation of
their control end user interfaces, and provisions of
the generated control end user interfaces, as well
8 IN RE: BLACK
as acceptance of control commands targeted for it-
self and relay of control commands targeted for ap-
plicable ones of auxiliary devices 104–108.
Nakajima ¶ 51. The Board concluded that Nakajima’s TV
is a slave relay station within the meaning of the ’146 ap-
plication and “stored programming instructions are encom-
passed within the broadest reasonable definition of a tag
file” because the programming instructions enable the TV
to generate and provide control instructions, i.e., tags, and
relay them to auxiliary devices, i.e., controllable devices.
J.A. 15–16. The stored programming instructions also en-
able the slave relay station, i.e., Nakajima’s TV, to accept
commands from a control device such as Nakajima’s uni-
versal remote. Id.
The Board also found that Nakajima “teaches directly
providing commands to controlled devices” from the slave
relay station (Nakajima’s TV). J.A. 14. The Board found
that Nakajima teaches that “the slave relay station re-
sponds to the activation of a tag at the control device to
transmit a control command directly to the controllable de-
vice.” J.A. 16.
For the same claim element—transmitting commands
directly to the controllable device—the Examiner noted
that Nakajima “discloses a graphical user interface with
activatable links (Figures 3A–C) and further provides func-
tionality of selecting and providing XML language with
content that corresponds to the page to be executed [sic]
further the commands can be directly provided (Figure 8
and Paragraphs 31, 34, and 51).” J.A. 167. The Examiner
later appeared to rely on a different configuration of ele-
ments in Nakajima for the direct transmission element, de-
scribing direct transmission of commands from the remote
to Nakajima’s TV. J.A. 200 (citing Nakajima ¶¶ 31, 34, 35,
Figures 2 and 8).
As for a motivation to combine Arling and Nakajima,
the Board appears to rely on the reasoning of the
IN RE: BLACK 9
Examiner, presumably because Applicants did not object to
the Examiner’s explanation for a motivation to combine the
references. The Examiner explained that both references
disclose “the functionality of providing the file with device
information,” in the form of a tag file. J.A. 167; see also
J.A. 166. Such functionality “provides an established sys-
tem of accessing information improving overall operabil-
ity.” J.A. 166, 167. The Board agreed with the Examiner
but did not explicitly provide a motivation to combine
Arling and Nakajima.
After the Board issued its Decision on Appeal, Appli-
cants filed a request for rehearing. The Board denied the
request in its Decision on Request for Rehearing and made
“explicit that which was implicit in the Decision [on Ap-
peal].” J.A. 5. The Board expanded its analysis of Arling,
stating that “[i]mplicit in [its] finding is our agreement
with the Examiner that Arling’s teaching of command con-
version to address a particular controllable device teaches
‘both a definition of [the particular] controllable device and
a listing of one or more commands to be transmitted . . . to
that controllable device,’ as recited in claim 1.” J.A. 4. The
Board reasoned that Arling discloses generating com-
mands for various appliances like TVs, audio receivers, and
network appliances. Therefore, the Arling invention must
generate different types of commands for different devices.
Thus, implicit in Arling’s disclosure is storage of both de-
vice definitions for different devices, as well as commands
to be sent to those different devices.
Applicants timely appealed. We have jurisdiction un-
der 28 U.S.C. § 1295 and 35 U.S.C. § 141(a).
DISCUSSION
Appellants present two questions on appeal: (1)
whether Arling and Nakajima disclose the tag file limita-
tion recited in the ’146 application; and (2) whether the
Board adequately provided a motivation to combine Arling
and Nakajima in light of the Board’s “new” findings
10 IN RE: BLACK
regarding the prior art disclosures. We address each issue
in turn.
This court reviews the Board’s factual findings for sub-
stantial evidence and its legal conclusions de novo. See In
re DiStefano, 808 F.3d 845, 848 (Fed. Cir. 2015) (citing In
re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)). Ob-
viousness under 35 U.S.C. § 103 is a “mixed question of fact
and law.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge
Ltd., 821 F.3d 1359, 1366 (Fed. Cir. 2016). What a prior
art reference discloses and whether there is a motivation
to combine are each questions of fact reviewed for substan-
tial evidence. In re Kahn, 441 F.3d 977, 985 (Fed. Cir.
2006); In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998).
On appeal, Appellants direct their arguments only to
Claim 1 of the ’146 application. Appellants contend that
Arling fails to disclose a tag file that contains both a defi-
nition of a controllable device and a listing of one or more
commands to be transmitted to said controllable device.
Appellants do not contest the Board’s construction of
“tag file.” They argue that the teachings of Arling do not
satisfy the tag file limitation recited in claim 1 of the
’146 application. Specifically, Appellants contend that
data set 132 in Arling (see Figure 1 above) is first saved as
an XML file and is then modified by device definitions 135
to generate command data set 134. Put another way, Ap-
pellants contend that Arling does not teach a tag file that
contains both command data and device definitions and
transmits commands directly to a controllable device. We
disagree.
The Examiner found that paragraph 30 of Arling
teaches device conversion definitions saved as an XML file
that executes the commands to defined controllable de-
vices. Citing Figure 1 and paragraphs 29 and 30, the Ex-
aminer further explained that the XML file in Arling may
contain infrared (IR) or radio frequency (RF) based appli-
ance commands, indicating that the commands are
IN RE: BLACK 11
transmitted directly to the controllable device. The Exam-
iner explicitly found the XML files in Arling to be the tag
files discussed in the ’146 application and that these XML
files contained commands and device definitions that are
transmitted directly to the controllable device, as required
by claim 1.
The Board affirmed the Examiner’s findings and
agreed that Arling teaches converting commands to ad-
dress a particular controllable device. The Board reasoned
that Arling discloses generating commands for various ap-
pliances like TVs, audio receivers, and network appliances.
Therefore, the Arling invention must have the ability to
command different devices. As a result, Arling teaches the
storage of device definitions and commands, including
transmission of said commands to these different devices.
Appellants argue that the Board’s and Examiner’s
reading of Arling is unreasonable because the disclosure
describes a tag file (data set 132) without command data or
device definitions because the command (data set 134) does
not exist until it is subsequently generated using a device
definition stored on the remote control. Appellants’ argu-
ments are not persuasive for two reasons. First, it is rea-
sonable to read Arling and conclude that the commands
and device definitions may exist in a single tag file in light
of the knowledge of a person of ordinary skill. A person of
ordinary skill in the art attempting to solve a problem is
not wholly restricted to the literal confines of the prior art.
We may assume that “familiar items may have obvious
uses” and that a person of ordinary skill may draw upon
her knowledge and creativity to solve the same problem.
KSR Intern. Co. v. Teleflex, Inc., 550 U.S. 398, 420–21
(2007) (“A person of ordinary skill is also a person of ordi-
nary creativity, not an automaton.”). Therefore, drawing
upon the creativity of a person of ordinary skill, it is not
unreasonable to conclude that Arling implicates a tag file
containing both commands and device definitions such that
12 IN RE: BLACK
the commands are transmitted directly to controllable de-
vices.
Second, Appellants’ individual attack on the Arling dis-
closure is improper when the Board rejected the ’146 appli-
cation based on the combined teachings of Arling and
Nakajima. In re Merck & Co., Inc., 800 F.2d 1091, 1097–
98 (Fed. Cir. 1986) (“Non-obviousness cannot be estab-
lished by attacking references individually where the rejec-
tion is based upon the teachings of a combination of
references.” (citations omitted)). We must read Arling in
combination with Nakajima for what these references
teach as a whole. Together, these references are reasona-
bly read to teach the elements of claim 1 of the ’146 appli-
cation.
The Board read paragraph 51 of Nakajima to disclose
stored programming instructions (tag file) that enable the
TV (slave relay station) to provide control instructions and
relay them to auxiliary devices, i.e., controllable devices.
J.A. 15–16. These stored programming instructions thus
contain the command to be transmitted to the controllable
device. Nakajima acknowledges that these auxiliary de-
vices include VCRs, DVD players, and home theater audio
control units. J.A. 37 ¶ 39. We therefore hold that sub-
stantial evidence supports the finding that Arling and
Nakajima disclose a tag file that embodies the limitations
recited in claim 1 of the ’146 application.
Appellants do not seriously contend that Nakajima
fails to disclose direct transmission of commands to control-
lable devices. They instead attack the Board’s purported
lack of disclosure of a motivation to combine Nakajima
with Arling because the Board relied on a combination of
elements in Nakajima different from those relied upon by
the Examiner to meet the direct transmission element. As
a result, Appellants contend that the Board affirmed the
rejection on new grounds thereby requiring that we re-
mand. We disagree.
IN RE: BLACK 13
The hallmark of whether the Board made a new ground
for rejection is whether Appellants had an opportunity to
respond to “the thrust of the rejection.” In re Leithem, 661
F.3d 1316, 1319 (Fed. Cir. 2011) (quoting In re Kronig, 539
F.2d 1300, 1302–03 (CCPA 1976)). Appellants had the op-
portunity to respond to the Board’s grounds for rejection in
the Request for Rehearing. They failed to raise any argu-
ments regarding the Board’s purported failure to disclose a
motivation to combine based on the alleged new grounds of
direct transmission or the Board’s reliance on paragraph
51 of Nakajima. Appellants instead argued that none of
the prior art references disclose the tag file limitation.
Appellants’ position ignores that both the Examiner
and the Board rely on paragraph 51 to show Nakajima
teaches direct transmission. Appellants further disregard
the Board’s explicit reliance on the Examiner’s findings
and conclusions in its Decision on Appeal. J.A. 10 (“[W]e
refer to . . . the Final Office Action . . . and Answer . . . for
the reasoning, findings, and conclusions of the Exam-
iner.”). The Examiner and the Board each found that
Nakajima discloses the direct transmission element of
claim 1 of the ’146 application. The Examiner further ar-
ticulated a motivation to combine Arling and Nakajima
during prosecution, stating a person of ordinary skill in the
art would have wanted “the functionality of providing the
file with device information as constructed by
Nakajima . . . because it provides an established system of
accessing information improving overall operability.”
J.A. 167. Yet Appellants did not object to this particular
finding in either the Request for Rehearing or their appeal
brief before the Board. Because Appellants have had a fair
opportunity to respond to both the Board’s and Examiner’s
grounds for rejection, we see no basis to conclude that the
Board made a new ground of rejection here. See In re Ste-
pan Co., 660 F.3d 1341, 1343 (Fed. Cir. 2011) (“Whether
the Board relied on a new ground of rejection is a legal
question that we review de novo.” (citations omitted)).
14 IN RE: BLACK
CONCLUSION
We recognize our prior admonitions to the Board that
it support its determinations with clear, expressed reasons.
E.g., In re Nuvasive, Inc., 842 F.3d 1376, 1383–85 (Fed. Cir.
2016). While in this case the Board’s determination may
be said to lack a high degree of specificity or detail, the
grounds for rejection in this case are sufficiently present in
the Examiner’s reasoning and conclusions, the Board’s De-
cision on Appeal, and the additional reasoning in the Deci-
sion on Request for Rehearing. This court has previously
upheld Board rejections based on obviousness when the
Board’s “path may reasonably be discerned,” even if “its
conclusions are cryptic, but . . . supported by the record.”
In re Huston, 308 F.3d 1267, 1280–81 (Fed. Cir. 2002); see
also In re Applied Materials, Inc., 692 F.3d 1289 (Fed. Cir.
2012). We see no reason why, under these facts, it would
not be possible to discern the grounds for the Board’s rejec-
tion on this record. Accordingly, we affirm.
AFFIRMED
COSTS
No Costs.
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: JEREMY BLACK, PATRICK H. HAYES,
Appellants
______________________
2018-1166
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 13/542,146.
______________________
O’MALLEY, Circuit Judge, dissenting.
The majority finds substantial evidence supporting the
Board’s factual findings relating to its obviousness analy-
sis, and concludes that the grounds for rejection are “suffi-
ciently present” in some combination of the examiner’s
rejection, the Board’s decision on appeal, and the Board’s
rehearing decision, I disagree. I find the Board’s analysis
insufficient to allow for meaningful appellate review. Be-
cause “we may not supply a reasoned basis for the agency’s
action that the agency itself has not given,” and because
this is not a case where “the agency’s path may reasonably
be discerned,” I dissent. See Bowman Transp., Inc. v. Ar-
kansas-Best Freight Sys., Inc., 419 U.S. 281, 285–86 (1974)
(citing SEC v. Chenery Corp., 332 U.S. 194, 196 (1947)). I
would remand the Board’s decision holding the claims of
the ’146 application unpatentable as obvious and direct the
Board to fully set forth the reasons why it believes one of
2 IN RE: BLACK
ordinary skill in the art would have been motivated to com-
bine the relevant prior art references.
As the majority correctly recognizes, claim 1 of the ’146
application contains a “tag file limitation” which includes
“both a definition of the controllable device and a listing of
one or more commands to be transmitted to the controlla-
ble device.” J.A. 192. Claim 1 also discloses “executing the
tag file whereupon a communication protocol correspond-
ing to the definition of the controllable device contained in
the tag file associated with the activatable link is used to
transmit directly to the controllable device the one or more
commands contained in the tag file.” Id. Therefore, to sat-
isfy claim 1’s “tag file limitation,” the tag file must be “as-
sociated with the activatable link” and include both: (1) a
definition of the controllable device; and (2) a listing of one
or more commands to be transmitted to the controllable de-
vice. Id.
The Board found that “Arling teaches a data structure
that defines the command to be transmitted to a controlla-
ble device, upon activation of a tag at a control device.” Ex
Parte Black, No. 2016-7690, 2017 Pat. App. LEXIS 5591, at
*11 (P.T.A.B. June 2, 2017) (Board Decision). The Board
separately agreed with the Examiner that “Nakajima
teaches directly providing commands to controlled de-
vices.” Id. at *12. As the majority recognizes, however, the
Board did not explain why a skilled artisan would have had
a motivation to combine Arling and Nakajima.
Applicants filed a request for rehearing, asserting that
“no reference of record discloses, teaches, or suggests a tag
file that comprises both a definition of a controllable device
and a listing of one or more commands to be transmitted
directly to that controllable device” as recited in claim 1.
Ex Parte Black, No. 2016-7690, 2017 Pat. App. LEXIS
7780, at *2 (P.T.A.B. Aug. 11, 2017) (Rehearing Decision)
(emphasis in original). In its rehearing decision, the Board
IN RE: BLACK 3
indicated that it “agreed with the Examiner that the com-
bination of Arling and Nakashima [sic] taught the ‘tag file’
and its further limitations.” Id. at *3–4. The Board ex-
plained that, implicit in its prior decision was “agreement
with the Examiner that Arling’s teaching of command con-
version to address a particular controllable device teaches
‘both a definition of [the particular] controllable device and
a listing of one or more commands to be transmitted . . . to
that controllable device,’ as recited in claim 1.” Id. at *4.
In affirming the Board, the majority finds that “Arling
teaches the storage of device definitions and commands”
and finds it “reasonable to read Arling and conclude that
the commands and device definitions may exist in a single
tag file.” Maj. Op. at 11. The majority maintains that the
Board rejected the ’146 application based on the combined
teachings of Arling and Nakajima, and that substantial ev-
idence supports that finding. To the contrary, however, as
explained below: (1) Arling does not disclose the “tag file
limitation;” and (2) the Board has never even discussed
why there would have been a motivation to combine Arling
and Nakajima to arrive at the claimed limitation.
First, although the Board found that Arling “teaches a
data structure that defines the command to be transmitted
to a controllable device, upon activation of a tag at a control
device,” the record demonstrates that Arling does not, by
itself, disclose the “tag file limitation” as claimed. Board
Decision, 2017 Pat. App. LEXIS 5591, at *11. In its analy-
sis, the Board pointed to paragraph 30 of Arling, which pro-
vides, in part, that:
data set 132 may be used to generate command
data (i.e., IR or RF based appliance commands)
which may then be assigned as a macro command
or other immediately available command set on re-
mote control 10 for use by a user in effecting recall
4 IN RE: BLACK
of the device and media states on source appliance
set 12a.
Id.
Although the Board found data set 132 sufficient for
“commands to be transmitted” and Arling’s disclosure of
“device definitions” sufficient for the device definition lim-
itation of claim 1, it failed to identify disclosure of a single
tag file that contains both the device definition and com-
mand data to be transmitted to a controllable device. In-
deed, Figure 2 of Arling demonstrates that the device
definitions 135a and command data 134 are separately
stored:
IN RE: BLACK 5
Arling explains that “data set 132 is composed of state
and media data captured from a set of source appliances
and media.” J.A. 57 at ¶ 30. Figure 2 demonstrates that
6 IN RE: BLACK
data set 132 and the device definitions 135 are separate
files that can be used to generate another separate file: the
output data set 134. Because data set 134 does not exist
until it is generated, data set 134 cannot be contained in a
single tag file along with the device definitions. 1 As such,
Arling does not expressly disclose the claimed “tag file lim-
itation.”
For its part, the Board provided no explanation of how
Arling discloses the combined storage of device definitions
and command data and made no factual finding that com-
bining the two would have been obvious to a person of or-
dinary skill in the art at the time of invention. In its
decision denying rehearing, the Board asserted that, “[t]o
be able to generate the different types of commands that
can be sent to these different types of devices, Arling must
store both device definitions for the different devices, as
well as the commands that can be sent to the different de-
vices.” Rehearing Decision, 2017 Pat. App. LEXIS 7780, at
*4–5. To the extent this single sentence can be construed
as a finding that Arling inherently discloses the “tag file
limitation,” it is insufficient to justify the Board’s obvious-
ness determination.
We have explained that inherency “must be carefully
circumscribed in the context of obviousness.” Par Pharm.,
Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195 (Fed. Cir.
2014). A party must, therefore, satisfy a “high standard in
order to rely on inherency to establish the existence of a
1 Arling explains that the device definitions are used
to generate command data, further demonstrating that the
command data transmitted is not contained within the de-
vice definitions. J.A. 58 at ¶ 301 (“In general, the device
selection/state data 136, device definitions 135, and data
conversion maps 138 are used in converting or modifying
data set 132 to data set 134.”).
IN RE: BLACK 7
claim limitation in the prior art in an obviousness analy-
sis”—the limitation at issue either necessarily must be pre-
sent, or must be the “natural result of the combination of
elements explicitly disclosed by the prior art.” Id. at 1195–
96. As Appellants point out, the examiner never found that
Arling inherently disclosed the “tag file limitation.” Nor
did the Board provide any explanation or support for its
apparent inherency finding. As such, the Board’s cursory
statement on rehearing cannot substantiate its obvious-
ness analysis.
The majority suggests that our focus should be on the
combination of Arling and Nakajima, rather than Arling
alone. But at oral argument, counsel for the government
asserted that the Board’s rehearing decision found that
Arling discloses all components of the claimed “tag file lim-
itation.” See Oral Arg. at 18:09–30, available at
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=
2018-1166.mp3. (“It took two decisions for the Board to re-
ally show how Arling discloses the three parts—the tag file
part, the command control, which comes from the specifi-
cation that the Board found, and the definition of control-
lable device and set of commands.”). As such, to the extent
the majority attempts to sidestep problems with the
Board’s obviousness analysis based on Arling alone by say-
ing that the Board did not rely on it exclusively, the gov-
ernment apparently does not agree. As the majority points
out, moreover, the examiner relied on Nakajima as disclos-
ing the direct transmission element of claim 1—not the
other components of the “tag file limitation.”
Second, although the majority finds Appellants’ indi-
vidual attack on Arling improper because the Board “re-
jected the ’146 application based on the combined teachings
of Arling and Nakajima,” the Board failed to engage in a
motivation to combine analysis. Indeed, when asked at
oral argument to identify the Board’s analysis with respect
to any motivation to combine Arling and Nakajima, counsel
8 IN RE: BLACK
for the government was unable to do so. See Oral Arg. at
16:19–42.
It is well established that “[t]he agency tribunal must
make findings of relevant facts, and present its reasoning
in sufficient detail that the court may conduct meaningful
review of the agency action.” In re Lee, 277 F.3d 1338, 1346
(Fed. Cir. 2002) (vacating the Board’s obviousness determi-
nation and remanding for the Board to “set forth the find-
ings and explanations needed for ‘reasoned
decisionmaking’”). We have also explained that it is not
enough to merely “summarize and reject arguments with-
out explaining why the [Board] accepts the prevailing ar-
gument.” In re Nuvasive, Inc., 842 F.3d 1376, 1383–84
(Fed. Cir. 2016).
The government argues that the examiner found a mo-
tivation to combine and submits that Appellants did not
contest that finding before the Board, thereby relieving the
Board of any need to address it. Oral Arg. at 17:29–56. 2
But the examiner’s only statement regarding a motivation
to combine Arling and Nakajima was that “[o]ne would
have been motivated to provide this functionality because
it provides an established system of accessing information
improving overall operability.” J.A. 167. In its Decision on
Appeal, the Board simply noted—without analysis—that
2 The majority also seems to believe that Appellants
did not contest the examiner’s motivation to combine find-
ing in their appeal brief to the Board. Maj. Op. at 13. But
the Board clearly understood that the combination of prior
art references was at issue on appeal, it just failed to ex-
pressly address motivation to combine in is obviousness
analysis. Decision on Appeal, 2017 Pat. App. LEXIS 5591,
at *4–5 (“The issue presented by Appellants’ arguments is
whether the Examiner errs in finding the combination of
Niwamoto, Arling, and Nakajima teaches or suggests” the
“tag file limitation” recited in claim 1.).
IN RE: BLACK 9
“the Examiner relies on a combination of Arling and
Nakajima” to teach the “tag file limitation.” Board Deci-
sion, 2017 Pat. App. LEXIS 5591, at *9. The Board then
addressed Arling and Nakajima separately, with no fur-
ther mention of motivation to combine. Id. at *10–14.
As noted, in its rehearing decision, the Board stated
that it “agreed with the Examiner that the combination of
Arling and Nakashima taught the ‘tag file’ and its further
limitations.” Rehearing Decision, 2017 Pat. App. LEXIS
7780, at *3–4. Rather than articulate reasons why it
agreed with the examiner’s analysis, the remainder of the
Board’s discussion focuses exclusively on Arling and culmi-
nates in the Board’s new inherency finding. Id. at *4–5.
Given our case law, the Board’s failure to clearly articulate
any motivation to combine warrants remand. See In re Van
Os, 844 F.3d 1359, 1361–62 (Fed. Cir. 2017) (vacating ob-
viousness determination where the Board “did not explain
why modifying” the prior art “would have been ‘intuitive’
or otherwise identify a motivation to combine”).
Although the majority recognizes that the Board’s de-
cision lacks “a high degree of specificity or detail,” it never-
theless concludes that it is “possible to discern the grounds
for the Board’s rejection.” Maj. Op. at 14. I disagree.
Where, as here, the Board’s stated grounds for affirming
the examiner’s rejection are either wrong (as to Arling
alone) or insufficient (as to any combination of references),
I believe remand is required. As such, I respectfully dis-
sent.