[Patentpractice] Effectiveness (or not) of arguing lack of motivation to combine references

[Krista Jacobsen]

A long time ago, I was told that arguing a lack of motivation to combine
references is never successful to traverse a 103 rejection unless the
resulting combination is somehow broken (e.g., it doesn’t work at all, or
the combination eliminates some major goal/benefit of the primary
reference). This is one of those nuggets that has always stuck with me.

I often argue, in both office action replies and appeal briefs, that there
is a lack of motivation to combine references, even if the combination is
feasible but the Examiner's reasoning is flimsy/bogus or uses hindsight.
But I do not think the lack of motivation to combine references has ever
been my only argument, so I have always wondered about whether these
arguments are actually moving the needle, or if they are just creating a
record that the applicant did not concede the point.

Because the identification of a credible motivation to combine is part of
the Office's burden in a 103 rejection, the pragmatist in me wants to
believe that it is possible to traverse and win on the basis of a lack of
motivation to combine the references, even if that is the only argument.
But what is the reality? Have you ever traversed and won during examination
based solely on a lack of motivation to combine references? (My guess is
that I will be able to find winning appeals based solely on lack of
motivation to combine references, though I haven't researched it yet.)

Best regards,
Krista

------------------------------------------
Krista S. Jacobsen
Attorney and Counselor at Law
Jacobsen IP Law
krista at jacobseniplaw.com
T:  408.455.5539
www.jacobseniplaw.com
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