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[JimIvey]

I don't understand why finding the disclosure of unexpected benefits is particularly persuasive of non-obviousness.  If a PHOSITA would be strongly motivated to combine X and Y to obtain result W, why is it relevant that the PHOSITA would not know about favorable result Z?

JustAnotherExaminer made the point that KSR allows combination of references with no motivation to combine if the combination produces predictable results.   So, in the manner introduced by JAE, it's an alternative to requiring a motivation of some sort.

I agree that unexpected results might not be absolutely determinative.  However, at least in the context of JAE's comment, it mandates some other justification for combination of references, such as a motivation, and the unexpected results cannot be that motivation. 

For example, effective treatment of cancer using aspirin in hot coffee probably isn't non-obvious by reciting the combination of aspirin and hot coffee.  In that respect, I think Isaac is correct; the presence of unexpected results won't negate any evidence that the combination was obvious for other reasons.  However, a claim for treating cancer using aspirin combined with hot coffee is probably non-obvious because of the unexpected results being incorporated into the claim.

Regards.

[khazzah]

JustAnotherExaminer made the point that KSR allows combination of references with no motivation to combine if the combination produces predictable results.   So, in the manner introduced by JAE, it's an alternative to requiring a motivation of some sort.

Not to be picky, but JAE said that KSR allows combination without EXPLICIT motivation if there are BENEFICIAL predictable results.

KSR is actually narrower even that that. KSR allows combination *of familiar elements* *according to known methods* when it does no more than yield predictable [beneficial] results.

My understanding of the obviousness framework is that there must always be a REASON to combine. KSR offers a shortcut of sorts in providing generic rationales that serve as reasons to combine. In the Predictable Results rationale, the reason you combine is that it's beneficial to do so, and further that you expect it to be beneficial. As a side note, I'm not sure what "familiar elements" and "known methods" adds to the obviousness analysis -- both of those phrases sound like they relate to novelty.

the presence of unexpected results won't negate any evidence that the combination was obvious for other reasons. 

I like that way of thinking about it: reasons TO combine might coexist with reasons NOT TO combine. In which case, the stronger argument wins.

[Isaac]

However, a claim for treating cancer using aspirin combined with hot coffee is probably non-obvious because of the unexpected results being incorporated into the claim.

Maybe. But it strikes me that it would be exceedingly difficult to get the cancer treatment claim allowed unless the known result W from the combination is something you would want to avoid for cancer patients.  If coffee plus asprin is simply an exceptional pain reliever, it might be obvious to give the combination to pain wracked cancer patients.

Probably tricky to enforce this kind of patent too.  I can imagine doctors simply pointing their patients to journal articles describing the coffee-aspirin miracle regimen.

[Isaac]

As a side note, I'm not sure what "familiar elements" and "known methods" adds to the obviousness analysis -- both of those phrases sound like they relate to novelty.

They aren't related to novelty simply because they may be found anywhere in the relevant prior art.

[khazzah]

As a side note, I'm not sure what "familiar elements" and "known methods" adds to the obviousness analysis -- both of those phrases sound like they relate to novelty.

They aren't related to novelty simply because they may be found anywhere in the relevant prior art.

I'm not following ...

Are you saying that "familiar elements" and "known methods" are relevant to the Predictable Results rationale for obviousness? 

Meaning that the Predictable Results rationale also requires that the claimed elements not just be taught by the references, but rise to the level of "familiar" elements? And that the Predictable Results rationale further requires that the POSITA know how to combine the elements as claimed (ie, "known methods")?

[BTW, I just love the obviousness discussions on this form. I feel like I've learned a *lot* about obviousness here.]

[ManOfManyBadIdeas]

JustAnotherExaminer made the point that KSR allows combination of references with no motivation to combine if the combination produces predictable results.   So, in the manner introduced by JAE, it's an alternative to requiring a motivation of some sort.

Not to be picky, but JAE said that KSR allows combination without EXPLICIT motivation if there are BENEFICIAL predictable results.

Not to be picky, but JAE said that he doesn't need motivation if there are predictable results. I added the explicit and the
beneficial parts in my reply, because I thought that's what he/she meant, but JimIvey's post in correct with regards to what
JAE said in his/her post.

As a side note, I'm not sure what "familiar elements" and "known methods" adds to the obviousness analysis -- both of those phrases sound like they relate to novelty.

For what a non-expert opinion is worth, I think familiar and known relates to prior art. It just says that none of the elements of the combination are novel,
but it doesn't say anything about combination not being novel, so it's not related to the novelty of the claimed invention. So in other words I think the
meaning is that each of the features of the claimed invention are known in the prior art. It means that a POSITA would not have any difficulty in combining
the features if so desired. Predictable results means that the invention doesn't disclose anything that's not known in the prior art about the reasons why
a POSITA would want to combine the references, so the claimed invention is truly no more than a sum of its non-novel parts.

To some degree any obviousness argument is about novelty and at its core means that the only reason the invention is novel is that nobody bothered
to do it before, and that the invention disclosure doesn't give POSITAs a good enough reason to change that attitude (enablement? utility?). It's all
connected I think, just different ways to look at the same thing. It's just that at some angles things are more obvious

[Isaac]

For what a non-expert opinion is worth, I think familiar and known relates to prior art. It just says that none of the elements of the combination are novel, but it doesn't say anything about combination not being novel, so it's not related to the novelty of the claimed invention. So in other words I think the meaning is that each of the features of the claimed invention are known in the prior art. It means that a POSITA would not have any difficulty in combining the features if so desired.

I think you've nailed it.  And you've also answered the question khazzah was asking me.

[JustAnotherExaminer]

MPEP 2143.  Exemplary rationales A through G.

Keep in mind, those are guidelines for examiner's on how to support a conclusion of obviousness written by the PTO attorneys in light of KSR.

Motivation to combine is just one of many rationales used to support obviousness.  And if you're in the computing arts, you get to use your imagination on rationales, cause none of the examples for each rationale make any flipping sense.

Take for instance rationale A.  Combining prior art elements according to known methods to yield predictable results.

If the claim is functional language implemented by software and/or hardware directed to A+B, do I need to prove ref I teaching A and ref II teaching B can be combined according to known methods?  My practice so far has been no, and just stating something like "via known methods of combining software functionalities".  Because everyone knows you can take software functionality A and combine it with software functionality B by adding some code.

[ManOfManyBadIdeas]

MPEP 2143.  Exemplary rationales A through G.

Keep in mind, those are guidelines for examiner's on how to support a conclusion of obviousness written by the PTO attorneys in light of KSR.

Motivation to combine is just one of many rationales used to support obviousness.  And if you're in the computing arts, you get to use your imagination on rationales, cause none of the examples for each rationale make any flipping sense.

Take for instance rationale A.  Combining prior art elements according to known methods to yield predictable results.

If the claim is functional language implemented by software and/or hardware directed to A+B, do I need to prove ref I teaching A and ref II teaching B can be combined according to known methods?  My practice so far has been no, and just stating something like "via known methods of combining software functionalities".  Because everyone knows you can take software functionality A and combine it with software functionality B by adding some code.

I am confused, you say you do not have to show a know method of combining, and then you go ahead and show it anyway .
Adding code that implements functionality A to software that already includes code that implements functionality B is a known
method of combining software functionalities. But of course it depends, if the pieces of code are to access the same devices/data,
one has to also look if there is anything new about conflict resolution/coordination between these code fragments.