Motivation to combine is not present when benefit alleged to be provided by the combination is already present in the art

Wait … what?

This argument came up and prevailed – twice – in Tech Center 1700 PTAB decisions in November.

First, Ex parte Gama, US Patent Application No 12/042641, Appeal 2019-002094, decided November 5, 2019.  In Gama, the Examiner found claims directed to a fuel filter obvious over two references.  The motivation to combine, the Examiner alleged, was that doing so would eliminate the need for an operator to manually open a drain valve.  However, the Board found that the primary reference already disclosed an alternate embodiment that automatically opened.  As a result, the Board held:

…the “advantage of eliminating the need for manually draining water from Davis’ housing the Examiner asserts would be achieved by the proposed modification of Davis’ fuel processor device is already achieved with Davis’ existing device and therefore would not have led one of ordinary skill in the art to modify Davis’ device as proposed.

Second, Ex parte Hansen, US Patent Application 12/345,215, Appeal 2019-001796, decided November 14, 2019.  In Hansen, Appellants claimed a laminated fabric that the Examiner found obvious over nine combinations of eight references.    The Examiner asserted that one of the combinations taught all of the limitations of the claim.  Motivation to combine was said to be provided by these same references, alleged to teach that it was known in the art to produce a product that is pleasant next to the skin for extended periods.  Appellant argued:

[t]he Examiner has not provided a sustainable or adequate reason that has any rational underpinning to validate why a person of ordinary skill in the art…would modify Fontana’s woven structure (with its already solved soft-to-skin touch) into a laminated structure with an already soft-to-skin touch.

To which the Board responded:

We agree with Appellant’s argument.  On the record before us, we are not persuaded the Examiner provides reasoning or identifies persuasive evidence sufficient to establish one of ordinary skill would have had reason to combine Fontana ‘840 and Morman to arrive at the claimed invention.  See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring “reasoning with some rational underpinning to support the legal conclusion of obviousness”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)