Motivation for combining the element is the sole purpose of the element...

[dab2d]

Say that the Examiner modifies a paint brush by replacing the handle a putty knife and uses the motivation "in order to obtain a device that can spread a material as desired".

1. That is what putty knives do. How do you argue with a motivation that is basically what the element's sole function. It is like saying it is obvious to add a knife to a chair so one can cut things as desired... To me the motivation is flawed while possibly accurate in its assertion.

2. What is meant by "as desired"? Is it the desire of the user of the paint brush? Or is it the desire of the user of the putty knife in the modifying reference? Of course the user of the putty knife wants a putty knife to spread material as desired. Isn't the as desired supposed to be the motivation... should he explain why one has this desire while using a paint brush?

I am thinking that it is hindsight reasoning, but that never works. I also found a legal reasoning that states that Motivation to combine requires desirability, not merely trade off. Has anyone had any experience with this reasoning. Does it still hold water after KSR

"Trade-offs often concern what is feasible, not what is, on balance, desirable. Motivation to combine requires the latter." Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 (Fed. Cir. 2000)
 

[Robert K S]

I am thinking that it is hindsight reasoning, but that never works.

I wouldn't say never.

And if you don't make the arguments that the examiner's allegations are conclusory and thus not amenable to judicial review, and if you don't demand affidavits from the examiner testifying to the examiner's use of personal knowledge in making the rejection, what do you have to show the Board?  The CAFC?

[khazzah]

if you don't demand affidavits from the examiner testifying to the examiner's use of personal knowledge in making the rejection, what do you have to show the Board?  The CAFC?

Who says the Examiner used personal knowledge?

I've come across this issue a few times in BPAI decisions -- ie, Ex. did not personal affidavit when requested and App. made this argument at the Board -- and the BPAI always said the record did not show that the Examiner was relying on his personal knowledge, and thus no affidavit is required. The Board usually found that the Examiner was instead taking Official Notice or was relying on "common sense" (not positive about that part). I blogged about "affidavit of Examiner's personal knowledge" topic here http://allthingspros.blogspot.com/2009/12/can-you-demand-examiner-to-provide.html.

Don't get me wrong ... I'm a *big* proponent of getting the Examiner to put his reasoning in the record. I just think the "personal knowledge" is way overused and is generally misplaced.

[dab2d]

It is like saying it is obvious to add a knife to a chair so one can cut things as desired... To me the motivation is flawed while possibly accurate in its assertion

if one so desired to cut things...
 
How would you fight an obvious rejection like this?

[khazzah]

Say that the Examiner modifies a paint brush by replacing the handle a putty knife and uses the motivation "in order to obtain a device that can spread a material as desired".

To me the motivation is flawed while possibly accurate in its assertion.

Not necessarily flawed. But a better explanation of the reasoning should have been provided.
 

2. What is meant by "as desired"? Is it the desire of the user of the paint brush? Or is it the desire of the user of the putty knife in the modifying reference?

It's the combination that should be desirable, right? IOW, a POSITA makes this combination in order to achieve a benefit. So I'd say: Examiner hasn't explained why a paint brush user would benefit from having an additional putty knife function. [That's the reasoning that's missing.]

You and I both can probably come up with such an explanation, so maybe you'll lose in the end.  [That's why it's not necessarily flawed.] But you can't argue until you have something to argue *against*. Hence my strategy to always make the Examiner explain his reasoning for the record.

It is like saying it is obvious to add a knife to a chair so one can cut things as desired
if one so desired to cut things... How would you fight an obvious rejection like this?

That's kinda what I alluded to above ... cutting things probably does have a benefit.

If the user of a chair would in fact desire to cut things, then I'd say the Examiner has provided an excellent PF case for the obviousness of a chair-knife combo.

Off the top of my head, I can think of the following *possible* rebuttals:

• combination has drawbacks that outweigh the benefit of cutting [knife on a chair is dangerous?]
• primary reference would no longer operate as intended when modified by second reference [knife located on bottom of chair leg makes it unstable?]
• primary ref already has benefit provided by second ref [not appropriate for chair+knife hypo]

[dab2d]

Khaz,

Thanks again for your analysis. For some reason that South Park episode keeps popping into my head. The one were the cross an Elephant with a Pig. It would have been obvious to combine a an Elephant with a Pig... Why? because who would not want something that is half pig. It is the usefulness of the element that serves as the sole basis for the combination. Pigs are useful so it would be obvious modify anything to be half pig.

http://www.southparkstudios.com/episodes/103686/     

[JimIvey]

My apologies if this point was already made and I missed it.

One of my biggest peeves with rejections today is the citation of a motivation floating in the air and not connected to anything in the claims or the references.  "One of ordinary skill in the art would be motivated to combine the references because the combination would be better."  Great.  So what?

The motivation to combine must have been known by one of ordinary skill in the art at the time the invention was made.  It's not enough to name some random motivation that could have come from the application itself or could have been made up of whole cloth from the examiner at the time the application is examined.  It must be shown to have been known to one or ordinary skill at the time the invention was made.

Let's change the hypothetical a bit.  Imagine the invention was a USB thumb drive in the handle of a tire iron.  I'm sure you'd get a rejection for obviousness because, as we all know, one would be motivated to have data stored in a tire iron -- better than a dumb, old tire iron with no data storage capacity, right?  Except that we don't know that.  A USB thumb drive is intended to be light and portable.  A tire iron is designed to be seldom used, strong, and durable.  Combining the two defeats all those purposes.  Who wants a tire iron hanging from their key-chain?  Who wants to toss a car jack on top of a USB thumb drive in the trunk of their car? 

Just pulling random motivations out of the various orifices of examiners has to stop.  It's just silly.  The motivations must be known to those of ordinary skill in the art at the time the invention was made.

Regards.

[Robert K S]

Who says the Examiner used personal knowledge?

If the examiner's rejection is predicated on a statement like "it would have been obvious to combine ... in order to attain a first apparatus with an advantage or feature of a second apparatus" or "it would have been obvious to combine ... since a predictable result would ensue", it is at least worth asking whether the conclusory statement is attributable to the personal knowledge of an examiner and, if so, to request that the examiner file an affidavit stating such.  It's bad to get to the appeal stage without having at least one request of this sort on the record--preferably repeated requests, each more insistent than the last when the examiner has merely repeated conclusory statements (or piled them up one on top of the other).  Conclusory statements are not amenable to judicial review.  It is an act of good faith on the part of the applicant to assume that when such a conclusory statement is made, it is merely because the examiner is relying on personal knowledge, and not because the examiner is making stuff up, which is a bit of a bad faith assumption.

"One of ordinary skill in the art would be motivated to combine the references because the combination would be better."  Great.  So what? ... It's not enough to name some random motivation that could have come from the application itself or could have been made up of whole cloth from the examiner at the time the application is examined. ... Just pulling random motivations out of the various orifices of examiners has to stop.  It's just silly.  The motivations must be known to those of ordinary skill in the art at the time the invention was made.

Yep.

[khazzah]

A USB thumb drive is intended to be light and portable.  A tire iron is designed to be seldom used, strong, and durable.  Combining the two defeats all those purposes.  Who wants a tire iron hanging from their key-chain?  Who wants to toss a car jack on top of a USB thumb drive in the trunk of their car? 

I'm with you.

That was one my rebuttal argument examples: the drawbacks of the combination [the ones you listed] outweigh the benefits [another place to store data].

The motivations must be known to those of ordinary skill in the art at the time the invention was made.

Agreed. But I don't see how that point is bolstered by your list of drawbacks.

That is, the way I see it, the benefit "another place to store data" isn't a new benefit, it was known at the time of filing. It was also a benefit known to those who deal with tire irons, because that's just GuyOffTheStreet and GuyOffTheStreet knows about USB drives as well as tire irons.

Now, I can see that in some fact scenarios, time of filing and POSITA are relevant factors.

Take an electronics device that's more sophisticated than a USB drive, and I can see that GuyOffTheStreet doesn't see the benefits of the TireIron-SophisticatedElectronic combination because he doesn't know about SophisticatedElectronic. Same with time of filing -- if the time of filing was old enough, GuyOffTheStreet *wouldn't* know about USB drives.

My criticism may simply indicate that I'm expecting too much from our simple hypos. The good thing about simple hypos like Knife+Chair, PaintBrush+PuttyKnife and TireIron+USB is that they're easily to think of. The bad thing is that they're too probably too simple to stand up to full analysis.

[khazzah]

One of my biggest peeves with rejections today is the citation of a motivation floating in the air and not connected to anything in the claims or the references.  "One of ordinary skill in the art would be motivated to combine the references because the combination would be better."  Great.  So what?

Yes! I feel validated. I think.

If I'm understanding Jim correctly, his reasoning is similar to an argument I used not too long ago. I said the Examiner's motivation was merely a generic benefit (stronger, faster, etc.), and the Examiner had not shown that this generic benefit was a motivation to combine the specific features of the references as relied on in the rejection.

I had another argument along the same lines. The feature in the first ref was Virtual Memory and the second was a disk controller. The Examiner said that the benefit of Virtual Memory was that it allowed the use of memory beyond physical memory. I said that doesn't explain how using Virtual Memory is of benefit to a disk controller.

BTW, I cite In re Kahn when I make these sorts of arguments

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)

IOW, the relevant motivation is that for combining the teachings in a manner that results in the claimed invention.

What do you think?

[dab2d]

What does IOW mean?

I know that on appeal the TSM argument may work, but does it hold water anymore with examiners since KSR?

[khazzah]

What does IOW mean?

In Other Words

I know that on appeal the TSM argument may work, but does it hold water anymore with examiners since KSR?

Hard to say. The percentage of cases in which I argue Motivation-To-Combine alone is very small. I almost always have a Does-Not-Teach argument to go along with my MTC argument.

My sense is that MTC alone will rarely sway an Examiner.

Actually, I'm inclined to say that MTC alone rarely wins at the Board either. But I don't see that as any sort of bias or laziness at the Board. More that there the number of fact scenarios where Motivation *is* present under KSR is greater than the number where Motivation is *not* present. IOW, the Board rarely reverses based on MTC arguments, but I'd say their actions are mostly correct in those cases.

Just my anecdotal opinion.

[DogDayPM 9er9er9er]

One of my biggest peeves with rejections today is the citation of a motivation floating in the air and not connected to anything in the claims or the references.  "One of ordinary skill in the art would be motivated to combine the references because the combination would be better."  Great.  So what?

My favorite pet peeve that I have gotten a number of times now goes like, "PHOSITA would combine Ref A with Ref B to arrive at your invention because Ref B shows it is possible to do X, therefore, if PHOSITA desired to do X to Ref A, he could".

[dab2d]

, "PHOSITA would combine Ref A with Ref B to arrive at your invention because Ref B shows it is possible to do X, therefore, if PHOSITA desired to do X to Ref A, he could"

DD, I think your pet peeve is the same line of what I was trying to convey. Have you found a good argument to counter that?

Given KSR, does the "small advancement in a crowded art" still hold water"?

[JimIvey]

The motivations must be known to those of ordinary skill in the art at the time the invention was made.

Agreed. But I don't see how that point is bolstered by your list of drawbacks.

My point is that there is no motivation to combine a tire iron with a USB thumb drive.  Who here wouldn't think, upon seeing a USB thumb drive duct-taped to a tire iron in a friend's trunk, "what a dumb-funk!"?  The test seems to be whether an examiner can name any motivation to combine references.  That's not what the law requires.

I can add data storage capacity to an ordinary automobile windshield by duct-taping USB thumb drives to the windshield.  And one would motivated to do so because it would add data storage capability to an ordinary windshield, right?  NO!!  If one of ordinary skill in the art would recognize that an important end served by a device would be defeated by the combination, there is no motivation to combine.  Think about motivation to decrease temperatures in automobiles by painting all windshields with completely opaque flat black spray paint.  Obvious?  Hell no!

But, more importantly, just naming a motivation is not enough.  Suppose at some point in the future that flat black spray paint can be opaque from one direction and transparent from the other direction.  Fine, obvious then, right?  No, there must be some showing that this motivation (i) existed at the time the invention was made and (ii) was known to those of ordinary skill in the art.

In short, here's what I'm seeing (though more recent rejections are getting much better):

One of ordinary skill in the art would be motivated to combine the references because [insert any motivation at all].

Here's the very least we ought to be seeing:

One of ordinary skill in the art would be motivated to combine the references because [insert a motivation that actually motivates, as in makes the thing better in some way without defeating its raison d'etre].  This motivation was known to those of ordinary skill in the art as evidenced by [prove that the motivation was known by those of ordinary skill in the art].  Since [provide actual evidence that the ordinary artisan knew of this motivation before the invention was made], the ordinary artisan knew this motivation at the time the invention was made.

Anything short of that fails to make a prima facie case of obviousness.

Regards.

I know that on appeal the TSM argument may work, but does it hold water anymore with examiners since KSR?

I've said this before, so I'm repeating myself.

The TSM test was to make things easier for the PTO.  KSR did not eliminate the TSM test but rather indicated that it is just one way to show obviousness.  Without the TSM test, a showing of obviousness goes back to Graham.  And, when was the last time anyone here saw detailed findings on the level of ordinary skill in the art at the time the invention was made?  If anyone has seen that, I'd love to see it.  It'd by like snorkeling and seeing a celocant swim by.

The TSM test was a way to get around that -- we can usually presume that one or ordinary skill in the art can read.  Accordingly, showing a motivation to combine in the manner claimed obviates having to show that the ordinary artisan would have thought of it; it's right there in black-and-white.  Ditch the TSM test and you have to produce detailed factual findings on the level of ordinary skill in the art at the time the invention was made.

In KSR, the PTO successfully lifted themselves out of the frying pan and into the fire.  Of course, the frying pan is still available as TSM is still a legitimate way to show obviousness.

Regards.