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

Sat Mar 15 13:42:48 UTC 2025

Thanks to everyone who shared their thoughts and experiences. I'm
encouraged to hear that arguments can be effective even at the examination
stage.

It often seems like the examiner gave motivation to combine 5 seconds of
thought and just scribbled down whatever they could think of in that amount
of time. As a result, there is often *at least* an argument that a PHOSITA
would not combine the references for the reason suggested by the examiner,
if not also an argument that the PHOSITA would not have combined the
references at all. I generally argue both, if I can, hoping that it will
move the needle, but if not, to preserve the issue for appeal (as Suzannah
said). Thank you all for sharing your strategies.

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

On Fri, Mar 14, 2025 at 7:09 PM Brian Cronquist via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> Thank you all (Krista, David B., SKS, Dale, Tim, Michael, and Roger); you
> have reminded me to make sure that a '*no motivation to combine*'
> argument is made on all 103s, those which make sense of course. I had
> forgotten this. Gotta make everything 'appeal-ing'
>
> As to a 103 *silver bullet*, my 100%'er (yup, so far....) is when I can
> make an *inoperable if combined* argument. Mention of Graham factors
> generally helps to makes'em back down too.
>
> BC
> Brian Cronquist
> VP Technology & IP
> MonolithIC 3D Inc.
>
>
>
> On Fri, Mar 14, 2025 at 2:30 PM Roger Browdy via Patentpractice <
> patentpractice at oppedahl-lists.com> wrote:
>
>> KSR said that evidence of motivation to combine was not a requirement in
>> all cases as it is permissible to rely on common sense.  However, KSR and
>> subsequent Fed Cir cases make clear that when basing a rejection on what is
>> essentially “obvious to try”, the examiner must present evidence of a
>> reasonable expectation of success.  I find this to be successful in my
>> chem/biotech practice.
>>
>>
>>
>> *Roger L. Browdy*
>>
>> Partner
>>
>> _____________________________________________
>>
>> *FisherBroyles, LLP*
>>
>> direct: +1 202-277-5198
>>
>> *roger.browdy at fisherbroyles.com <roger.browdy at fisherbroyles.com>*
>>
>> www.fisherbroyles.com
>>
>>
>>
>> The information contained in this e-mail message is only for the personal
>> and confidential use of the intended recipient(s). If you have received
>> this communication in error, please notify us immediately by e-mail, and
>> delete the original message.
>>
>>
>>
>>
>>
>>
>>
>> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
>> Behalf Of *Michael B. Comeau via Patentpractice
>> *Sent:* Friday, March 14, 2025 1:03 PM
>> *To:* For patent practitioners. This is not for laypersons to seek legal
>> advice. <patentpractice at oppedahl-lists.com>
>> *Cc:* Michael B. Comeau <mbc at mcgarrybair.com>
>> *Subject:* Re: [Patentpractice] Effectiveness (or not) of arguing lack
>> of motivation to combine references
>>
>>
>>
>> Another tactic is arguing that the result of a combination is not a
>> motivation to combine:
>>
>> https://www.mriplaw.com/blog/lhyc7qy7jvhwj9hn19rxcq6m2vfz5f?format=amp
>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.mriplaw.com_blog_lhyc7qy7jvhwj9hn19rxcq6m2vfz5f-3Fformat-3Damp&d=DwMGaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=4dEHyuXJuTyTpG3K6gu9wTJWD_PRbf4K9kL19SkPMMyQomBI2wwgLI_RrELIZLxp&m=s5I8BHiFUpbwm9y4PuNIVRsYEcHpf8QD37tLFN4vCGcoPAReb_yaJm81bfUTsjZB&s=AMiWeXB8ySu8-I3y5wMCd-xn1h0okCVIebB7gCCb8tI&e=>
>>
>>
>>
>> This message may contain  confidential or privileged  information. If it
>> is not intended for you, please destroy it.
>>
>> Michael B. Comeau  |  Attorney  |  McGarry Bair PC
>> Direct (616) 742-3515  |  mbc at mcgarrybair.com
>> ------------------------------
>>
>> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> on
>> behalf of Timothy Snowden via Patentpractice <
>> patentpractice at oppedahl-lists.com>
>> *Sent:* Friday, March 14, 2025 12:57:36 PM
>> *To:* patentpractice at oppedahl-lists.com <
>> patentpractice at oppedahl-lists.com>
>> *Cc:* Timothy Snowden <tdsnowden at outlook.com>
>> *Subject:* Re: [Patentpractice] Effectiveness (or not) of arguing lack
>> of motivation to combine references
>>
>>
>>
>> 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
>>
>> Quisenberry Law PLLC
>>
>> 13910 Champion Forest Drive, Suite 203
>>
>> Houston, Texas 77069
>>
>> (832) 680.5000 (office)
>>
>> (832) 680.1000 (mobile)
>>
>> (832) 680.5555 (facsimile)
>>
>> www.quisenberrylaw.com
>> <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.quisenberrylaw.com_&d=DwMGaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=4dEHyuXJuTyTpG3K6gu9wTJWD_PRbf4K9kL19SkPMMyQomBI2wwgLI_RrELIZLxp&m=s5I8BHiFUpbwm9y4PuNIVRsYEcHpf8QD37tLFN4vCGcoPAReb_yaJm81bfUTsjZB&s=509EEmKY9iFmzePC9aOjZcecSgQMbDmb0xI2TTe_gaE&e=>
>>
>>
>>
>> *This email may contain information that is confidential and subject to
>> the attorney-client privilege, work product doctrine and other applicable
>> privileges.  This email is intended to be received only by those to whom it
>> is specifically addressed.  Any receipt of this email by others is not
>> intended to and shall not waive any applicable privilege.  If you have
>> received this email in error, please delete it and immediately notify the
>> sender by separate email.  Thank you.*
>>
>>
>>
>>
>>
>>
>>
>> *From: *Patentpractice <patentpractice-bounces at oppedahl-lists.com>
>> <patentpractice-bounces at oppedahl-lists.com> on behalf of David Boundy
>> via Patentpractice <patentpractice at oppedahl-lists.com>
>> <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>
>> <patentpractice at oppedahl-lists.com>, Krista Jacobsen
>> <krista at jacobseniplaw.com> <krista at jacobseniplaw.com>
>> *Cc: *David Boundy <PatentProcedure at gmail.com>
>> <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
>>
>> Attorney and Counselor at Law
>>
>> Jacobsen IP Law
>>
>> krista at jacobseniplaw.com
>>
>> T:  408.455.5539
>>
>> www.jacobseniplaw.com
>> <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.jacobseniplaw.com_&d=DwMGaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=4dEHyuXJuTyTpG3K6gu9wTJWD_PRbf4K9kL19SkPMMyQomBI2wwgLI_RrELIZLxp&m=s5I8BHiFUpbwm9y4PuNIVRsYEcHpf8QD37tLFN4vCGcoPAReb_yaJm81bfUTsjZB&s=oZOFfu18gIqAXJ0a5_DT2jlXuULFp1FVh31eKjuF8M8&e=>
>>
>> --
>> Patentpractice mailing list
>> Patentpractice at oppedahl-lists.com
>>
>> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>> <https://urldefense.proofpoint.com/v2/url?u=http-3A__oppedahl-2Dlists.com_mailman_listinfo_patentpractice-5Foppedahl-2Dlists.com&d=DwMGaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=4dEHyuXJuTyTpG3K6gu9wTJWD_PRbf4K9kL19SkPMMyQomBI2wwgLI_RrELIZLxp&m=s5I8BHiFUpbwm9y4PuNIVRsYEcHpf8QD37tLFN4vCGcoPAReb_yaJm81bfUTsjZB&s=893CFjec850-6WNX2J5h40frHsZoQmnFMH-Q368JAt8&e=>
>>
>>
>>
>> --
>>
>>
>> *[image: Image removed by sender.]      [image: Image removed by sender.
>> Cambridge Technology Law LLC]
>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.iam-2Dmedia.com_strategy300_individuals_david-2Dboundy&d=DwMGaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=4dEHyuXJuTyTpG3K6gu9wTJWD_PRbf4K9kL19SkPMMyQomBI2wwgLI_RrELIZLxp&m=s5I8BHiFUpbwm9y4PuNIVRsYEcHpf8QD37tLFN4vCGcoPAReb_yaJm81bfUTsjZB&s=HzztF-JA7HhdQ-XJqXnKtCTR966OXuaQNU-HsuoUCEE&e=>*
>>
>> Listed as one of the world's 300 leading intellectual property strategists
>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.iam-2Dmedia.com_strategy300_individuals_david-2Dboundy&d=DwMGaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=4dEHyuXJuTyTpG3K6gu9wTJWD_PRbf4K9kL19SkPMMyQomBI2wwgLI_RrELIZLxp&m=s5I8BHiFUpbwm9y4PuNIVRsYEcHpf8QD37tLFN4vCGcoPAReb_yaJm81bfUTsjZB&s=HzztF-JA7HhdQ-XJqXnKtCTR966OXuaQNU-HsuoUCEE&e=>
>>
>> Articles at http://ssrn.com/author=2936470
>> <https://urldefense.proofpoint.com/v2/url?u=http-3A__ssrn.com_author-3D2936470&d=DwMGaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=4dEHyuXJuTyTpG3K6gu9wTJWD_PRbf4K9kL19SkPMMyQomBI2wwgLI_RrELIZLxp&m=s5I8BHiFUpbwm9y4PuNIVRsYEcHpf8QD37tLFN4vCGcoPAReb_yaJm81bfUTsjZB&s=wcDW_av_tK5zHQW3X5dDl-YPrCHQyu7abBWUDf5mjic&e=>
>>
>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.keynect.us_requestCardAccess_USA500DBOUN-3F&d=DwMGaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=4dEHyuXJuTyTpG3K6gu9wTJWD_PRbf4K9kL19SkPMMyQomBI2wwgLI_RrELIZLxp&m=s5I8BHiFUpbwm9y4PuNIVRsYEcHpf8QD37tLFN4vCGcoPAReb_yaJm81bfUTsjZB&s=DjIQl3PxvghLga4E6z_OiV_hyZAOJAq7rEZ1qiyNzms&e=>
>>
>> Click here to add me to your contacts.
>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.keynect.us_requestCardAccess_USA500DBOUN-3F&d=DwMGaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=4dEHyuXJuTyTpG3K6gu9wTJWD_PRbf4K9kL19SkPMMyQomBI2wwgLI_RrELIZLxp&m=s5I8BHiFUpbwm9y4PuNIVRsYEcHpf8QD37tLFN4vCGcoPAReb_yaJm81bfUTsjZB&s=DjIQl3PxvghLga4E6z_OiV_hyZAOJAq7rEZ1qiyNzms&e=>
>>
>> *David Boundy
>> <https://urldefense.proofpoint.com/v2/url?u=https-3A__www.iam-2Dmedia.com_strategy300_individuals_david-2Dboundy&d=DwMGaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=4dEHyuXJuTyTpG3K6gu9wTJWD_PRbf4K9kL19SkPMMyQomBI2wwgLI_RrELIZLxp&m=s5I8BHiFUpbwm9y4PuNIVRsYEcHpf8QD37tLFN4vCGcoPAReb_yaJm81bfUTsjZB&s=HzztF-JA7HhdQ-XJqXnKtCTR966OXuaQNU-HsuoUCEE&e=>*
>>
>> DBoundy at cambridgetechlaw.com <dboundy at cambridgetechlaw.com> / +1
>> 646.472.9737 <%2B1%206464729737>
>>
>> *Cambridge Technology Law LLC*
>> 686 Massachusetts Avenue #201, Cambridge  MA  02139
>> http://www.CambridgeTechLaw.com
>> <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.cambridgetechlaw.com_&d=DwMGaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=4dEHyuXJuTyTpG3K6gu9wTJWD_PRbf4K9kL19SkPMMyQomBI2wwgLI_RrELIZLxp&m=s5I8BHiFUpbwm9y4PuNIVRsYEcHpf8QD37tLFN4vCGcoPAReb_yaJm81bfUTsjZB&s=ESTLBi9IH-DJsxOC6TApQU2PmSh627VChDR2qghowNs&e=>
>> http://www.linkedin.com/in/DavidBoundy
>> <https://urldefense.proofpoint.com/v2/url?u=http-3A__www.linkedin.com_in_DavidBoundy&d=DwMGaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=4dEHyuXJuTyTpG3K6gu9wTJWD_PRbf4K9kL19SkPMMyQomBI2wwgLI_RrELIZLxp&m=s5I8BHiFUpbwm9y4PuNIVRsYEcHpf8QD37tLFN4vCGcoPAReb_yaJm81bfUTsjZB&s=_aNZTnitMk9t3rR-NuOcmF3w7d_YLvlSgUr2wkRFG4g&e=>
>>
>> mailing address
>>
>> PO Box 590638
>>
>> Newton MA   02459
>>
>>
>> This communication is a confidential attorney-client communication
>> intended only for the person named above or an authorized representative.
>> Any dissemination, distribution, or copying of this communication is
>> strictly prohibited, whether by the author or recipients.  Any legal,
>> business or tax information contained in this communication, including
>> attachments and enclosures, is not intended as a thorough, in-depth
>> analysis of specific issues, nor a substitute for a formal opinion, nor is
>> it sufficient to avoid legal or other adverse consequences to the
>> recipient. Unless you are the addressee (or authorized to receive for the
>> addressee), you may not copy, use, disclose or distribute this
>> communication or attribute to the Firm any information contained in this
>> communication. If you have received this communication in error, please
>> advise the sender by replying to this message or by telephone, and then
>> promptly delete it.
>>
>>
>>
>> --
>> Patentpractice mailing list
>> Patentpractice at oppedahl-lists.com
>>
>> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>>
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250315/93d97895/attachment.html>