Last week, we briefed In re Ratti. 270 F.2d 810, 813, 123 USPQ 349, 352 (CCPA 1959); MPEP 2143.01 VI. Ratti clarifies that a secondary reference cannot modify the principle of operation of the primary reference in an obviousness rejection
These “principle of operation” arguments deserve more consideration than they receive.
First, the thresholds for factual findings and legal conclusions seem lower than some other arguments. For example, a successful “teaching away” argument requires a reference that criticizes, discredits, or discourages the Examiner’s proposed combination. Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). Although references commonly suggest preferable alternatives, references seldom “criticize[], discredit[], or discourage[]” a proposed combination. These arguments essentially mean that the skilled artisan would not have attempted the proposed combination.
As we recently discussed, “render unsuitable” arguments require a finding that the proposed modification renders the art inoperable. So, the references must support an Applicant’s argument that the proposed modification, e.g., would break the prior art apparatus (or method, etc.). These arguments essentially concede the skilled artisan might make the combination, but that making the combination would break the prior art apparatus.
“Principle of operation” arguments have an even lower threshold. The Applicant first acknowledges the skilled artisan might have made the Examiner’s proposed combination. And, by withholding a “render unsuitable” argument, the Applicant tacitly acknowledges the proposed modification would not have broken the prior art apparatus. Rather, the Applicant merely advances that the primary reference’s principle of operation would exclude the Examiner’s proposed modification with the secondary reference.
US patent attorneys sometimes receive instructions to present such arguments. However, these instructions inaccurately suggest the facts “teach away” from the combination. Under US law, that is not correct.
So, I wonder if US Examiners might find such arguments more persuasive, if the arguments are submitted as “changing the principle of operation,” rather than “teaching away.” To be clear, such arguments likely must show more than that the combination might be disadvantageous.
In any case, if Modal can assist your consideration of arguments against an obviousness rejection, please contact us.