For those of us who spend our days navigating obviousness, Thanksgiving season pairs nicely with a reminder that the law still requires articulated reasoning supported by evidence—not just broad statements that something would be “better” or “easier.” An examiner should rely on evidence of record or the knowledge of a person of ordinary skill when asserting a reason to modify prior art. A proper obviousness rejection requires a reasoned explanation grounded in facts, not general assertions of design choice, cost savings, or unspecified improvements. The Supreme Court put the point succinctly in KSR v. Teleflex: “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art,” and further, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”

A recent PTAB decision (Ex parte Cagle (Appeal 2025-000196)) is a timely illustration. The application concerns a turkey decoy with a downward-facing wry tail designed to mimic submissive hen behavior. Claim 1 is below:

1. A turkey decoy system comprising:
   a decoy comprising a silhouette of a wild turkey hen, the silhouette comprising:
   a body having a first centerline;
   a neck extending forwardly and upwardly from the body and supporting a head, the neck and the head being symmetrical with respect to the first centerline of the body; and
   a wry tail having top and bottom surfaces extending rearwardly and downwardly from the body, the wry tail being stationary and fixed against motion relative to the head, the wry tail having a second centerline angled to one side of the first centerline, the second centerline of the wry tail being stationary and fixed against movement relative to the first centerline and
   relative to the body while being angled to one side of the first centerline.

The examiner relied primarily on Chapman, which discloses a duck decoy, and acknowledged that Chapman did not describe the downward tail. To bridge the gap, the examiner asserted that modifying Chapman’s tail orientation would satisfy a manufacturer’s desire to reduce costs and might help further mimic a particular pose. But as the Board emphasized, nothing in Chapman suggests that reorienting a duck’s tail downward would reduce manufacturing costs, and the examiner did not provide any explanation of how the supposed cost savings would arise. More fundamentally, the Board observed that for a floating duck decoy, a downward-pointed tail would sit beneath the waterline and therefore “makes little sense” as a modification intended to enhance the decoy’s effectiveness. The fact that Chapman generically states that its concepts could be applied to other wildfowl—including turkeys—did not supply any evidence that a downward-facing tail would be beneficial or even visible.

The examiner further argued that the claimed tail position lacked criticality. But the record showed otherwise: the applicant explained, citing the specification, that the downward orientation was selected because it best mimics a submissive hen’s breeding posture. Even though the specification provided alternative embodiments, that did not undercut the disclosed benefit of the claimed embodiment. The Board agreed that the specification demonstrated criticality and rejected the examiner’s contrary conclusion. Because the rejections rested on unsupported assumptions about manufacturing and pose-enhancement rather than evidence or teachings in the references, the Board reversed all obviousness rejections.

For practitioners, this decision reinforces core principles that sometimes get lost when rejections rely on broad statements about design choice or “improving manufacturing.” Evidence matters, context matters, and the reason to modify must actually fit the technology.

Practice tips for responding to similar rejections:

• Point out that the examiner has not identified where the record shows the asserted benefit or motivation, pushing back on rationale that rests on generalities.
• Emphasize when the proposed modification would undermine, contradict, or be irrelevant to the reference’s stated purpose or operating context.
• Highlight any disclosed advantages tied to the claimed configuration, even when alternative embodiments exist.
• When the reference concerns a different species, environment, or use case, clearly articulate why the modification would not make technical sense to a skilled artisan.
• Preserve the factual distinction between mere possibility of modification and a reasoned motivation supported by evidence.