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

[David Boundy]

Yes and no.

I argue "no motivation to combine" frequently.  My most frequent arguments
are
(a) the examiner relies on personal observation and common sense, not
"substantial evidence," and
(b) The law requires a *problem* in B that motivates solution,
modification, combination with a solution in A.  The sentence the examiner
relies on says "In reference A, apparatus A has advantage A."  Great.
advantage A applies to apparatus A.   But that has nothing to do with, and
says nothing fairly inferring that Apparatus A and advantage A has any
relevance to reference B.
(c) "renders prior art suitable for its intended purpose" and "changes
principle of operation" from MPEP 2143.01(V) and (VI)
(a) and (b) seldom (not never, seldom) succeed with the examiner.  (c) is
better, but still not a silver bullet.   But all three have high (not
perfect, but high) success with the Board.  When they don't win, it's
almost always because the Board makes up a new rationale (and fails to
designate it as a new ground).

If you have Westlaw, it's easy to search PTAB decisions for "motivation to
combine" and you'll get lots of hits.

Doreen Trujillo, David Soucy, Ron Katznelson, and Tim Snowden helped me
with a big article on appeals for JPTOS.   I got markup from the editors
this morning, and should have it all worked in within a couple days.  It'll
probably be published by end of month.


On Fri, Mar 14, 2025 at 9:42 AM Krista Jacobsen via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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
> --
> Patentpractice mailing list
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>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>


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