Obviousness reversed because Examiner merely asserted that combination provided a benefit, without explaining how (Ex parte UTC)

Takeaway: The BPAI reversed an obviousness rejection because the Examiner did not explain how a combination provided an alleged benefit.  The Examiner merely asserted that modifying the reference would produce a benefit. The Board held that the Examiner had failed to make a prima facie case.


Details:
Ex parte United Technologies Corporation
Appeal 2009006732, Appl. No. 10/899,886, Tech. Center 3700
Decided November 18, 2009


The claim at issue was to a process for machining blade slots in a turbine.  The limitation at issue was  forming a rectangular slot having multiple rectangular areas. Those areas had walls that formed a perpendicular angle with a surface.  For purposes of the obviousness discussion, the general idea is more important than the specific claim language, so here's an illustration of the claimed slot and walls:

The Examiner rejected under § 103, using a primary reference that taught multiple areas. However, the Examiner admittedly the walls in the reference did not include an angle perpendicular to the surface:

The Examiner then asserted that :

It would have been obvious to one of ordinary skill in the art at the time of invention to make the first and second surfaces of Yazdzik et al. perpendicular to the first and third [walls], and second and fourth walls because such a configuration would have been far easier to machine than the angled first and second surfaces of Yazdzik et al.

The Board held that such a mere assertion does not amount to a prima facie case for obviousness.

The Examiner, however, does not explain why making the noted surfaces perpendicular would be “far easier” or point to any factual support for that determination. The initial burden is on the Examiner to provide a factual basis to support an obviousness conclusion. In re Warner, 379 F.2d at 1017. No such basis has been provided. Moreover, even if making the surfaces perpendicular is in fact easier, the Examiner has not articulated why that knowledge would have been known to one with ordinary skill in the art.

My two cents: When an Examiner asserts that the combination provides a particular benefit, think hard about whether that makes sense.  And if not, argue on the basis that the Examiner has not provided an explanation of how the alleged benefit flows from the combination. You might also question whether the feature that the Examiner asserts to be a benefit really is beneficial. Finally, even assuming the combination does result in the alleged behavior and the alleged behavior really is a benefit, consider whether a POSITA would realize it was a benefit. 

As a side note, the Applicant didn't rely solely on the motivation-to-combine argument. The Applicant also argued that the reference did not teach, and won on this point. And this was a relatively rare instance where the argument really was about what the reference taught.  (The vast majority of arguments are really about how broadly to read the claims.)

The claimed process for forming a slot included two steps, using two different grinding wheels. The Examiner alleged that the slot shown in the reference (the second graphic above) was formed by two different wheels. The Applicant successfully argued, by pointing to specific portions of the reference, that the reference did not teach that the slot was formed using the second wheel. The reference taught instead that the second wheel was used for finishing the slot already formed.