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

Timothy Snowden tdsnowden at outlook.com
Fri Mar 14 16:57:36 UTC 2025 

Another angle that is sometimes helpful is that the proposed motivation 
to combine is not supported by logical reasoning underpinned by the 
/evidence _of record_/ as a _whole_. Conceptually similar to David's 
point (a).

On 3/14/2025 10:58 AM, Dale Quisenberry via Patentpractice wrote:
>
> 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.”).
>
> C. Dale Quisenberry
>
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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> 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
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>     Attorney and Counselor at Law
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>     Jacobsen IP Law
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