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Reminder: Motivation to Combine Is Still Required to Render Patent Claims Obvious

The Federal Circuit recently reversed a PTAB obviousness finding because it found no motivation to combine features of the two cited prior art references. See Virtek Vision International ULC v. Assembly Guidance Systems Inc. Importantly, the Federal Circuit reached this conclusion despite both references belonging to relevant technical fields and each claimed feature being known in light of those references. But, even post-KSR, the claimed features merely being “known” is not enough to satisfy the motivation to combine analysis.

As a practitioner who often spars with USPTO examiners regarding their often hand-wavy explanations for combining references, this opinion is encouraging. It also serves as a reminder to push back on obviousness rejections that merely pay lip-service to the requirement to show motivation to combine instead of enunciating clear reasoning. Hopefully, opinions like this one will lead examiners to make clearer rejections or else allow claims where no motivation to combine exists.   

On the flip side, the opinion should remind patent challengers to identify where in the record motivation exists and to clearly articulate why someone skilled in art would be motivated to combine the cited references as claimed. The challenger's expert in this case testified that “it would have been obvious” to use the disclosed measurement system of a first reference in the system of a second reference “because both measurement systems were known.” Regardless, the Federal Circuit found that the expert failed to articulate any reason to combine the references and thus failed to show obviousness.  

So, while KSR offers circumstances under which motivation to a combine may be gleaned from outside the four corners of the prior art references (e.g., market pressure and finite solutions), this opinion reminds practitioners on either side of the obviousness argument that KSR did not do away with the requirement altogether.

"In short, this case involves nothing other than an assertion that because two coordinate systems were disclosed in a prior art reference and were therefore 'known,' that satisfies the motivation to combine analysis. That is an error as a matter of law. It does not suffice to simply be known. A reason for combining must exist."


patents, intellectual property, ptab, uspto