Patent applicants, especially those familiar with the patent laws of non-US jurisdictions, sometimes find it difficult to accept how US Examiners can combine prior art references in obviousness rejections. From a non-US point of view, it can seem like Examiners are permitted to combine any and every reference.
So, applicants are pleased to learn there are some limits on Examiners’ ability to combine references. One of these limits is that the combination cannot render the invention of the primary reference unsatisfactory for its intended purpose.
The bar for “render[ing] unsatisfactory” is high, though. In practice, the Applicant must argue more than that the modification renders the prior art invention less than optimal. E.g., In re Urbanski, 809 F.3d 1237, 1244, 117 USPQ2d 1499, 1504 (Fed. Cir. 2016) (confirming the skilled artisan would have been motivated to pursue the desirable properties taught by the secondary reference, even at the expense of foregoing the benefit taught by the primary reference). Instead, the Applicant must argue the modification renders the prior art invention inoperable. Id.; see also In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). That is, the modification must break the primary reference.
Applicants cannot rely on the MPEP’s choice of the word “unsatisfactory.” That is, it is not sufficient for an applicant to demonstrate the modification would render unsatisfactory (e.g., worsen) the primary reference. Instead, the applicant must show the modification would render inoperable (e.g., break) the primary reference.
In a future post, I hope to address the issue discussed in Session 14 of the US Prosecution Study Group from December 10, 2020. In the meantime, Modal can assist you in analyzing potential “render unsatisfactory” fact patterns.