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

[Suzannah K. Sundby]

On appeal the lack of motivation arguments can move the needle as evidenced by the case law mandating a motivation to combine is required.

I find about 70-80% success with the argument before examiners… while the examiners don’t acknowledge that their prior rejection failed for lack of motivation to combine, success of the arguments are evident by the examiners’ modified rejections in subsequent actions.

Important thing is that the lack of motivation to combine must be argued in the record in case it is needed on appeal.

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
1050 30th Street, NW
Washington, DC 20007
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suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>
www.canadylortz.com<http://www.canadylortz.com/>
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Krista Jacobsen via Patentpractice
Sent: Friday, March 14, 2025 9:41 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Krista Jacobsen <krista at jacobseniplaw.com>
Subject: [Patentpractice] Effectiveness (or not) of arguing lack of motivation to combine references

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<mailto:krista at jacobseniplaw.com>
T:  408.455.5539
www.jacobseniplaw.com<http://www.jacobseniplaw.com>
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