Last week, we discussed the difficulty of demonstrating that an Examiner’s proposed modification would render the prior art inoperable for its intended purpose. Accordingly, Applicants sometimes consider arguing a proposed modification would not have been obvious, because it would render the prior art inefficient for its intended purpose.
Certainly, these arguments can be presented, and, in some circumstances, might be effective. However, these arguments are generally unpersuasive. Why?
Examiners often follow the teaching-suggestion-motivation (TSM) test discussed in Winner Intern. Royalty Corp. v. Wang, 202 F.3d 1340 (Fed. Cir. 2000). Thus, an Examiner’s rejection often is premised on there being a motivation—a reason—to modify an applied reference. Commonly, this reason is to achieve a benefit.
Thus, let’s assume a generalized case, where the Examiner makes an obviousness rejection. Let’s further assume the secondary references do not support an argument that the Examiner’s proposed modification would render the primary reference inoperable. Let’s also assume the secondary references do support an argument that the Examiner’s proposed modification would render the primary reference inefficient. What might happen when the Applicant presents these inefficiency arguments?
The Examiner easily can find these arguments unpersuasive. Indeed, “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L, 437 F.3d 1157, 1165 (Fed. Cir. 2006) (citing Winner). Thus, following the Examiner’s proposed modification has a simultaneous advantage (i.e., the benefit behind the motivation and achieved by the proposed modification) and a disadvantage (i.e., the inefficiency identified by the Applicant). Accordingly, even if the Applicant is correct, the arguments do not necessarily obviate the motivation to combine. In other words, it can be irrelevant whether the Applicant is technically correct.
Therefore, Applicants should typically avoid these types of arguments. If Modal can assist you present more effective arguments, please contact us.