Combination Frustrates Purpose
While combinations of one or more cited art documents are typical in obviousness rejections under 35 U.S.C. § 103(a), the combination of two or more of the documents
may, on occasion, render one of the cited art documents unsatisfactory for its intended purpose. In other words, the combination “frustrates the purpose” of the
document. When this occurs in a rejection under 35 U.S.C. § 103(a), it may be beneficial to traverse the rejection along the lines of the following.
Applicant respectfully submits that the combination of the [FIRST FEATURE] discussed in [FIRST DOCUMENT] with the [SECOND FEATURE] of [SECOND DOCUMENT] is improper.
Applicant respectfully submits that such a combination would result in a bizarre situation where [GENERAL REASONING WHY COMBINATION FRUSTRATES PURPOSE]. The [FIRST
FEATURE] is important to [FIRST DOCUMENT] and the removal thereof would frustrate the purpose of the system discussed therein.
MPEP § 2143.01(V) states “[i]f proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is
no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984)” (emphasis added).
“If the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of
the references are not sufficient to render the claims prima facie obvious. In re Ratti, 270 F.2d 810, 123 USPQ 349 (CCPA 1959)”
In the present case, [DETAILED, FACT-SPECIFIC REASONING WHY COMBINATION FRUSTRATES PRINCIPLE OF OPERATION].
As such, Applicant respectfully submits that a person of ordinary skill in the art would not have a reason to combine these features and that further, the combination
thereof would frustrate the principle of operation of [FIRST DOCUMENT]. Therefore, Applicant respectfully requests that the rejection be withdrawn.