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

Fri Mar 14 15:58:48 UTC 2025

Some form language I’ve used re item c:

Therefore, the Office Action’s proposed modification is not permitted.  See In re Fritch, 972 F.2d 1260, 1265 n.12 (“A proposed modification [is] inappropriate for an obviousness inquiry when the modification render[s] the prior art reference inoperable for its intended purpose.”); In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (holding the suggested combination of references improper under § 103 because it “would require a substantial reconstruction and redesign of the elements shown in [the prior art reference] as well as a change in the basic principles under which [that reference’s] construction was designed to operate.”).  See also MPEP § 2143.01(V) (“If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification.”) and (VI) (“If the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious.”).

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of David Boundy via Patentpractice <patentpractice at oppedahl-lists.com>
Date: Friday, 14 March 2025 at 9:03 am
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>, Krista Jacobsen <krista at jacobseniplaw.com>
Cc: David Boundy <PatentProcedure at gmail.com>
Subject: Re: [Patentpractice] Effectiveness (or not) of arguing lack of motivation to combine references
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<mailto: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

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