More than three years after KSR, Applicants continue to file Appeal Briefs that respond to obviousness rejections with "There is no teaching, suggestion or motivation to combine the references." As the Board is quick to point out, KSR makes it clear that this is not the proper test for obviousness:
Appellant additionally argues throughout the Appeal Brief that the prior art does not teach, suggest, or motivate the proposed combination of the teachings of Ohayon and Watanabe. The correct standard, however, is whether the Examiner has articulated a reason with rational underpinning to support the proposed combination. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness") (cited with approval in KSR, 550 U.S. at 419 (holding a rigid insistence on teaching, suggestion, or motivation [TSM] is incompatible with its precedent concerning obviousness)).
(Ex parte Diamond.)
Under KSR, TSM is one rationale for combining references, but is not the only one:
Appellants also argue that the Examiner has not set forth a proper obviousness rejection because the Examiner has not articulated all of the findings “require[d]” by Manual of Patent Examining Procedure (MPEP) § 2143(G). This cited section of the MPEP pertains to the discussion of a Teaching, Suggestion, or Motivation (TSM) as one of several exemplary rationales that may be used to support a conclusion of obviousness – but the Examiner does not rely on such a rationale. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007) (characterizing the TSM test as a helpful insight, but rejecting the rigid requirement of a TSM).
(Ex parte Lyons.)
Here are a few cases in which the Applicant attacked TSM but didn't attack the rationale actually provided by the Examiner:
Appellants then rely on outdated case law in arguing that "[t]he motivation to combine these references is not found in any of the references." Appeal Br. 16. The Examiner, on the other hand, has provided reasoning articulating why it would have been obvious to combine the references as proposed. Ans. 9-10 (Grandey discloses materials used for noise/sound attenuation (col. 1, ll. 20-21), Brown discloses a noise/vibration absorbing media used in turbine applications (paras. 17 and 31)). The Examiner's proposed combination thus appears to merely select a suitable material according to its intended use.
(Ex parte Hardwicke.)
The underpinning of the Examiner's conclusion of obviousness is premised on a teaching of Matsuno to suspend a diagnosis under certain conditions that may lead to a misdiagnosis. While the Examiner does not explain in detail all of the underlying bases supporting this rational underpinning, one of ordinary skill in the art, reviewing the record before us, would recognize the support. As we have discussed above, the references describe a great desire to accurately diagnose the various components in the powertrain. ... As such, the Examiner's proposed combination is nothing more than predictably applying known techniques to a device ready for improvement. ...
The Examiner need only provide a reason with rational underpinning, which, as we have identified, the Examiner has done. The background knowledge, inferences, and creative steps that a person of ordinary skill in the art would employ need not always be explicitly laid out by the Examiner. Appellants have not provided any evidence, nor articulated any explanation, as to why the Examiner's reason is lacking rational underpinning. Instead, Appellants focus on the outdated TSM test. As such, we are not persuaded that the Examiner erred in concluding that the disclosures of Eich and Matsuno render obvious the subject matter of claim 9.
(Ex parte Langer, internal citations omitted.)
The Examiner first concludes that it would have been obvious to select an elastomer with an appropriate hardness. Appellants merely state that the art does not teach or suggest a vulcanized polymer having a Shore A hardness of 90 or less. However, a teaching or suggestion is not required to support a conclusion of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) ...
The Examiner articulates that one of ordinary skill would recognize the range of hardness values that would be suitable for oral brushes. This appears to be supported by similar statements in Libby and Coleman that we noted in our fact findings above. Appellants give no explanation why the Examiner's reason is lacking rational underpinning.
(Ex parte Roberts.)
My two cents: I don't think that mentioning teaching, suggestion or motivation is itself fatal. Nor is attacking the motivation relied on by the Examiner. But focusing too much on TSM may lead you to ignore the bigger picture: whether or not the Examiner provided "articulated reasoning with some rationale underpinning."
To increase your chances of winning on appeal, don't stop at TSM, but instead look carefully at the Examiner's rejection to see if he used a rationale like substitution, predictable results, or finite number of predictable solutions. If so, argue against that rationale. Even if the Examiner didn't use one of those rationales, you should think carefully about appealing if one of the rationales is appropriate. It's not unusual for the Board to fill in a rationale that the Examiner merely hinted at but didn't expound on. Though less common, it's not unheard of for the Board to discover such a rationale themselves.