Suggestion or Motivation To Modify the References

[Editor Note: This MPEP section is applicable

regardless of whether an application is examined under the AIA or under pre-AIA law.

For applications subject to the first inventor to file (FITF) provisions of the AIA,

the relevant time is "before the effective filing date of the claimed invention". For

applications subject to

pre-AIA 35 U.S.C. 102

, the

relevant time is "at the time of the invention". See

MPEP §

2150

et seq. Many of the court decisions discussed in this

section involved applications or patents subject to

pre-AIA 35 U.S.C.

102

. These court decisions may be applicable to applications

and patents subject to

AIA 35 U.S.C. 102

but the

relevant time is before the effective filing date of the claimed invention and not at

the time of the invention.]

Obviousness can be established by combining or modifying the teachings

of the prior art to produce the claimed invention where there is some teaching,

suggestion, or motivation to do so.

In re Kahn,

441 F.3d 977, 986, 78

USPQ2d 1329, 1335 (Fed. Cir. 2006) (discussing rationale underlying the

motivation-suggestion-teaching test as a guard against using hindsight in an obviousness

analysis).

Axonics, Inc. v. Medtronic, Inc.,

73 F.4th 950, 957-58,

2023 USPQ2d 795 (Fed. Cir. 2023) (the court found an erroneous framing of the motivation

inquiry led to an incorrect conclusion of nonobviousness). A “motivation to combine may

be found explicitly or implicitly in market forces; design incentives; the ‘interrelated

teachings of multiple patents’; ‘any need or problem known in the field of endeavor at

the time of invention and addressed by the patent’; and the background knowledge,

creativity, and common sense of the person of ordinary skill.”

Zup v. Nash

Mfg.,

896 F.3d 1365, 1371, 127 USPQ2d 1423, 1427 (Fed. Cir. 2018) (quoting

Plantronics, Inc. v. Aliph, Inc.,

724 F.3d 1343, 1354 [107 USPQ2d

1706] (Fed. Cir. 2013) (citing

Perfect Web Techs., Inc. v. InfoUSA,

Inc.,

587 F.3d 1324, 1328 [92 USPQ2d 1849] (Fed. Cir. 2009) (quoting

KSR,

550 U.S. at 418-21))

background knowledge,

creativity, and common sense of the person of ordinary skill.”

Zup v. Nash

Mfg.,

896 F.3d 1365, 1371, 127 USPQ2d 1423, 1427 (Fed. Cir. 2018) (quoting

Plantronics, Inc. v. Aliph, Inc.,

724 F.3d 1343, 1354 [107 USPQ2d

1706] (Fed. Cir. 2013) (citing

Perfect Web Techs., Inc. v. InfoUSA,

Inc.,

587 F.3d 1324, 1328 [92 USPQ2d 1849] (Fed. Cir. 2009) (quoting

KSR,

550 U.S. at 418-21)). See

MPEP § 2143

regarding

the need to provide a reasoned explanation even in situations involving common sense or

ordinary ingenuity. See also

MPEP § 2144.05

, subsection II, B.

I.

PRIOR ART SUGGESTION OF THE CLAIMED INVENTION NOT NECESSARILY NEGATED BY

DESIRABLE ALTERNATIVES

The disclosure of desirable alternatives does not necessarily negate

a suggestion for modifying the prior art to arrive at the claimed invention. In

In re Fulton,

391 F.3d 1195, 73 USPQ2d 1141 (Fed. Cir. 2004),

the claims of a utility patent application were directed to a shoe sole with

increased traction having hexagonal projections in a “facing orientation.” 391 F.3d

at 1196-97, 73 USPQ2d at 1142. The Board combined a design patent having hexagonal

projections in a facing orientation with a utility patent having other limitations of

the independent claim. 391 F.3d at 1199, 73 USPQ2d at 1144. Applicant argued that the

combination was improper because (1) the prior art did not suggest having the

hexagonal projections in a facing (as opposed to a “pointing”) orientation was the

“most desirable” configuration for the projections, and (2) the prior art “taught

away” by showing desirability of the “pointing orientation.” 391 F.3d at 1200-01, 73

USPQ2d at 1145-46. The court stated that “the prior art’s mere disclosure of more

than one alternative does not constitute a teaching away from any of these

alternatives because such disclosure does not criticize, discredit, or otherwise

discourage the solution claimed….”

Id

jections, and (2) the prior art “taught

away” by showing desirability of the “pointing orientation.” 391 F.3d at 1200-01, 73

USPQ2d at 1145-46. The court stated that “the prior art’s mere disclosure of more

than one alternative does not constitute a teaching away from any of these

alternatives because such disclosure does not criticize, discredit, or otherwise

discourage the solution claimed….”

Id.

In affirming the Board’s

obviousness rejection, the court held that the prior art as a whole suggested the

desirability of the combination of shoe sole limitations claimed, thus providing a

motivation to combine, which need not be supported by a finding that the prior art

suggested that the combination claimed by the applicant was the preferred, or most

desirable combination over the other alternatives.

Id.

See also

In re Urbanski,

809 F.3d 1237, 1244, 117 USPQ2d 1499, 1504

(Fed. Cir. 2016).

In

Ruiz v. A.B. Chance Co.,

357 F.3d 1270,

69 USPQ2d 1686 (Fed. Cir. 2004), the patent claimed underpinning a slumping building

foundation using a screw anchor attached to the foundation by a metal bracket. One

prior art reference taught a screw anchor with a concrete bracket, and a second prior

art reference disclosed a pier anchor with a metal bracket. The court found

motivation to combine the references to arrive at the claimed invention in the

“nature of the problem to be solved” because each reference was directed “to

precisely the same problem of underpinning slumping foundations.”

Id.

at 1276, 69 USPQ2d at 1690. The court also

rejected

the notion that “an express written motivation to

combine must appear in prior art references….”

Id.

at 1276, 69

USPQ2d at 1690.

II.

WHERE THE TEACHINGS OF THE PRIOR ART CONFLICT, THE EXAMINER MUST WEIGH THE

SUGGESTIVE POWER OF EACH REFERENCE

The test for obviousness is what the combined teachings of the

references would have suggested to one of ordinary skill in the art, and all

teachings in the prior art must be considered to the extent that they are in

analogous arts

rior art references….”

Id.

at 1276, 69

USPQ2d at 1690.

II.

WHERE THE TEACHINGS OF THE PRIOR ART CONFLICT, THE EXAMINER MUST WEIGH THE

SUGGESTIVE POWER OF EACH REFERENCE

The test for obviousness is what the combined teachings of the

references would have suggested to one of ordinary skill in the art, and all

teachings in the prior art must be considered to the extent that they are in

analogous arts. Where the teachings of two or more prior art references conflict, the

examiner must weigh the power of each reference to suggest solutions to one of

ordinary skill in the art, considering the degree to which one reference might

accurately discredit another.

In re Young,

927 F.2d 588, 18 USPQ2d

1089 (Fed. Cir. 1991) (Prior art patent to Carlisle disclosed controlling and

minimizing bubble oscillation for chemical explosives used in marine seismic

exploration by spacing seismic sources close enough to allow the bubbles to intersect

before reaching their maximum radius so the secondary pressure pulse was reduced. An

article published several years later by Knudsen opined that the Carlisle technique

did not yield appreciable improvement in bubble oscillation suppression. However, the

article did not test the Carlisle technique under comparable conditions because

Knudsen did not use Carlisle’s spacing or seismic source. Furthermore, where the

Knudsen model most closely approximated the patent technique there was a 30%

reduction of the secondary pressure pulse. On these facts, the court found that the

Knudsen article would not have deterred one of ordinary skill in the art from using

the Carlisle patent teachings.).

III.

FACT THAT REFERENCES CAN BE COMBINED OR MODIFIED MAY NOT BE SUFFICIENT TO

ESTABLISH

PRIMA FACIE

OBVIOUSNESS

The mere fact that references

can

be combined

or modified does not render the resultant combination obvious unless the results

would have been predictable to one of ordinary skill in the art.

KSR Int'l

Co. v. Teleflex Inc.,

550 U.S

in the art from using

the Carlisle patent teachings.).

III.

FACT THAT REFERENCES CAN BE COMBINED OR MODIFIED MAY NOT BE SUFFICIENT TO

ESTABLISH

PRIMA FACIE

OBVIOUSNESS

The mere fact that references

can

be combined

or modified does not render the resultant combination obvious unless the results

would have been predictable to one of ordinary skill in the art.

KSR Int'l

Co. v. Teleflex Inc.,

550 U.S. 398, 417, 82 USPQ2d 1385, 1396 (2007)

(“If a person of ordinary skill can implement a predictable variation,

§

103

likely bars its patentability. For the same reason, if a

technique has been used to improve one device, and a person of ordinary skill in the

art would recognize that it would improve similar devices in the same way, using the

technique is obvious unless its actual application is beyond his or her skill.”).

IV.

MERE STATEMENT THAT THE CLAIMED INVENTION IS WITHIN THE CAPABILITIES OF ONE OF

ORDINARY SKILL IN THE ART IS NOT SUFFICIENT BY ITSELF TO ESTABLISH

PRIMA

FACIE

OBVIOUSNESS

A statement that modifications of the prior art to meet the claimed

invention would have been “‘

well within the ordinary skill of the

art

at the time the claimed invention was made’” because the

references relied upon teach that all aspects of the claimed invention were

individually known in the art is not sufficient to establish a

prima

facie

case of obviousness without some objective reason to combine the

teachings of the references.

Ex parte Levengood,

28 USPQ2d 1300

(Bd. Pat. App. & Inter. 1993). ‘‘‘[R]ejections on obviousness cannot be sustained

by mere conclusory statements; instead, there must be some articulated reasoning with

some rational underpinning to support the legal conclusion of obviousness.’”

KSR,

550 U.S. at 418, 82 USPQ2d at 1396 (quoting

In re

Kahn,

441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)).

V

x parte Levengood,

28 USPQ2d 1300

(Bd. Pat. App. & Inter. 1993). ‘‘‘[R]ejections on obviousness cannot be sustained

by mere conclusory statements; instead, there must be some articulated reasoning with

some rational underpinning to support the legal conclusion of obviousness.’”

KSR,

550 U.S. at 418, 82 USPQ2d at 1396 (quoting

In re

Kahn,

441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)).

V.

THE PROPOSED MODIFICATION CANNOT RENDER THE PRIOR ART UNSATISFACTORY FOR ITS

INTENDED PURPOSE

If a proposed modification would render the prior art invention

being modified unsatisfactory for its intended purpose, there may be no suggestion or

motivation to make the proposed modification.

In re Gordon,

733

F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984) (Claimed device was a blood filter assembly

for use during medical procedures wherein both the inlet and outlet for the blood

were located at the bottom end of the filter assembly, and wherein a gas vent was

present at the top of the filter assembly. The prior art reference taught a liquid

strainer for removing dirt and water from gasoline and other light oils wherein the

inlet and outlet were at the top of the device, and wherein a pet-cock (stopcock) was

located at the bottom of the device for periodically removing the collected dirt and

water. The reference further taught that the separation is assisted by gravity. The

Board concluded the claims were

prima facie

obvious, reasoning

that it would have been obvious to turn the reference device upside down. The court

reversed, finding that if the prior art device were turned upside down it would be

inoperable for its intended purpose because the gasoline to be filtered would be

trapped at the top, the water and heavier oils sought to be separated would flow out

of the outlet instead of the purified gasoline, and the screen would become

clogged.). But see

In re Urbanski,

809 F.3d 1237, 1244, 117 USPQ2d

1499, 1504 (Fed. Cir

nding that if the prior art device were turned upside down it would be

inoperable for its intended purpose because the gasoline to be filtered would be

trapped at the top, the water and heavier oils sought to be separated would flow out

of the outlet instead of the purified gasoline, and the screen would become

clogged.). But see

In re Urbanski,

809 F.3d 1237, 1244, 117 USPQ2d

1499, 1504 (Fed. Cir. 2016) (The patent claims were directed to a method of enzymatic

hydrolysis of soy fiber to reduce water holding capacity, requiring reacting the soy

fiber and enzyme in water for about 60-120 minutes. The claims were rejected over two

prior art references, wherein the primary reference taught using a longer reaction

time of 5 to 72 hours and the secondary reference taught using a reaction time of 100

to 240 minutes, preferably 120 minutes. The applicant argued that modifying the

primary reference in the manner suggested by the secondary reference would forego the

benefits taught by the primary reference, thereby teaching away from the combination.

The court held that both prior art references “suggest[ed] that hydrolysis time may

be adjusted to achieve

different

fiber properties. Nothing in the

prior art teaches that the proposed modification would have resulted in an

‘inoperable’ process or a dietary fiber product with undesirable properties.”

(emphasis in original)).

“Although statements limiting the function or capability of a prior

art device require fair consideration, simplicity of the prior art is rarely a

characteristic that weighs against obviousness of a more complicated device with

added function.”

In re Dance,

160 F.3d 1339, 1344, 48 USPQ2d 1635,

1638 (Fed. Cir. 1998) (Court held that claimed catheter for removing obstruction in

blood vessels would have been obvious in view of a first reference which taught all

of the claimed elements except for a “means for recovering fluid and debris” in

combination with a second reference describing a catheter including that means

e with

added function.”

In re Dance,

160 F.3d 1339, 1344, 48 USPQ2d 1635,

1638 (Fed. Cir. 1998) (Court held that claimed catheter for removing obstruction in

blood vessels would have been obvious in view of a first reference which taught all

of the claimed elements except for a “means for recovering fluid and debris” in

combination with a second reference describing a catheter including that means. The

court agreed that the first reference, which stressed simplicity of structure and

taught emulsification of the debris, did not teach away from the addition of a

channel for the recovery of the debris.). Similarly, in

Allied Erecting v.

Genesis Attachments,

825 F.3d 1373, 1381, 119 USPQ2d 1132, 1138 (Fed.

Cir. 2016), the court stated “[a]lthough modification of the movable blades may

impede the quick change functionality disclosed by Caterpillar, ‘[a] given course of

action often has simultaneous advantages and disadvantages, and this does not

necessarily obviate motivation to combine’” (quoting

Medichem, S.A. v.

Rolabo, S.L.,

437 F.3d 1157, 1165, 77 USPQ2d 1865, 1870 (Fed. Cir. 2006)

(citation omitted)).

VI.

THE PROPOSED MODIFICATION CANNOT CHANGE THE PRINCIPLE OF OPERATION OF A

REFERENCE

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.

In re Ratti,

270 F.2d 810, 813, 123

USPQ 349, 352 (CCPA 1959) (Claims were directed to an oil seal comprising a bore

engaging portion with outwardly biased resilient spring fingers inserted in a

resilient sealing member. The primary reference relied upon in a rejection based on a

combination of references disclosed an oil seal wherein the bore engaging portion was

reinforced by a cylindrical sheet metal casing. The seal construction taught in the

primary reference required rigidity for operation, whereas the seal in the claimed

invention required resiliency

nt spring fingers inserted in a

resilient sealing member. The primary reference relied upon in a rejection based on a

combination of references disclosed an oil seal wherein the bore engaging portion was

reinforced by a cylindrical sheet metal casing. The seal construction taught in the

primary reference required rigidity for operation, whereas the seal in the claimed

invention required resiliency. The court reversed the rejection holding the

“suggested combination of references would require a substantial reconstruction and

redesign of the elements shown in [the primary reference] as well as a change in the

basic principle under which the [primary reference] construction was designed to

operate.”).