Pitfalls when arguing disadvantage of a reference in a 103

When reading BPAI decisions, I'm particularly interested in motivation-to-combine arguments. One line of attack that I often see is attacking the Examiner's motivation-to-combine by saying the combination has a disadvantage, and thus the POSITA would not be motivated to combine. In a similar line, the Applicants often argue that the combination negates a benefit provided by one of the references, and thus the POSITA would not be motivated to combine. Applicants often couch these similar arguments as "teaching away".

When presented with such arguments, the Board often cites to Winner Int’l Royalty Corp. v. Wang (Fed. Cir. 2000):

The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.

Here are several examples of cases in which the Board found that the Applicant's motivation-to-combine argument was a losing argument under Winner.

Ex parte Hahnl involved a muffler with a spring-controlled valve. In making a 103 rejection, the Examiner found that the primary reference taught a coil spring in a muffler, but did not teach a mechanism for cooling the spring. The Examiner therefore added a secondary reference which discloses a heat shield surrounding a spring in a boiler. The Applicants argued that the muffler reference taught away from the combination: the muffler spring was already made of heat-resistant material, and thus adding the heat shield was redundant, and increased the cost for no good reason. The Board found that this did not nullify using the heat shield reference to modify the muffler reference, since a POSITA could nonethless see a benefit in adding additional heat protection to the spring.

Ex parte Rawle involved a shaver with razor blades. The Examiner rejected under 103 using only a single reference, saying that modifying the three-bladed unit in the reference to add two more blades would be obvious because doing so would provide a closer shave. The Applicants argued that adding blades increases friction which reduces shave quality. The Board found that "these competing considerations (closer shave vs. increased frictional drag forces) would likely be weighed by" a POISTA, but "the mere existence of competing considerations does not establish nonobviousness."

Ex parte Sisken involved an engine with two exhaust gas control valves. The Examiner found that the primary reference in the 103 rejection taught everything except a second control valve as claimed, and so remedied this deficiency by adding another reference which taught two control values, the second one positioned as claimed. The Applicants argued that the primary reference taught away from the combination since it discussed the increased cost and complexity of a second valve. The Board found that a POSITA "could see benefit in generating air flow during the regenerating process which could outweigh the cost and complexity considerations of adding a second valve".

Ex parte Cooper involved a method of transferring funds. The Examiner found that the primary reference disclosed everything except delivering an ATM card to the funds recipient. The Examiner added a secondary reference which disclosed fund transfer to third-party recipients, including issuing an ATM card to the third-party recipient. The Applicants argued that the primary reference taught away from the combination because the stated goal of the primary reference was to eliminate the use of an ATM card. The Board acknowledged that withdrawal without an ATM card was an objective of the primary reference, but noted that the reference "further states that despite the advantages of a cardless withdrawal system, the invention may also be used in connection with other terminals, such as conventional ATMs". Thus, the reference did not teach away from the combination.

Ex parte Cable involved a grain conveyor which used an oval coil spring. The Examiner found that Admitted Prior Art disclosed all the elements, except that APA used an elastomeric spring instead of an oval coil spring. The Examiner then remedied the deficiency with another reference that disclosed an oval coil spring, finding it an obvious design choice to substitute one spring for another. The Applicants pointed to reasons described in the spec as to why a POSITA would not use coil springs. The Board found that "each of the alternatives of record had known advantages and disadvantages. However, the record does not provide any direct teaching away from the use of ovoid coil springs in vibratory conveying apparatuses."

To increase your chances of winning on this type of argument, it would probably help to go the extra mile and show that you've considered how the pros and cons of the combination play out when weighed against one another.