Board of Patent Appeals Reverses Examiner on Reasons For Combining

MARK TERRY, ESQ.

The Board of Patent Appeals and Interferences reversed an obviousness rejection because the examiner did not adequately explain why a person of ordinary skill would have combined the cited references.

The examiner relied on a boilerplate statement that an ordinary artisan could have been motivated to combine the references “in order to improve stability,” but did not identify an objective teaching in the prior art, generally available knowledge, or a reason why stability was a problem needing to be solved.

The Board emphasized that an obviousness rejection requires articulated reasoning with a rational underpinning. A conclusory statement that references could have been combined does not substitute for evidence and analysis showing why the combination would have been made.

The practical lesson is to scrutinize the examiner’s stated reason for combining references. When the rejection lacks supporting passages, documented knowledge in the art, or a reasoned explanation, the applicant may have a strong basis for reversal.