How Not to Use The “No Motivation” and “Teaching Away” Arguments When Responding to a 35 U.S.C. 103 Rejection

MARK TERRY, ESQ.

The article discusses Ex parte Ochs, involving a software claim that read information from a sensor and produced an output. The examiner combined teachings from two references and issued an obviousness rejection.

The applicant argued that there was no motivation to combine the references and that the prior art taught away from the claimed approach. The Board disagreed, finding that the combination amounted to substituting known, related techniques to obtain predictable results.

A reference teaches away only when it would discourage a person of ordinary skill from following the claimed path or direct that person toward a materially different approach. General differences between references are not enough.

The practical lesson is to avoid relying on conclusory “no motivation” or “teaching away” arguments. The response should identify explicit language in the prior art and, where possible, provide objective evidence rather than attorney argument alone.