Sometimes, as a patent professional, we look at two references being cited in combination and have the feeling that the examiner has ignored a straightforward, and very obvious, way to combine them that results in something different than what is claimed. This “more obvious” combination can be so tantalizing that all of our arguments are pulled in that direction.

But, as a recent appeal (Appeal 2022-002296, Application 15/509,176) illustrates, we must resist the intuitive lure of the more obvious combination.

The problem is that, perhaps counterintuitively, the mere fact that there are more obvious modifications/combinations than those proposed by the examiner does not mean that all other less obvious modifications are non-obvious. Rather, the question is whether the proposed modification/combination is on the obvious side, or the non-obvious side, of the line. Whether it is far or close to the line matters not.

In Appeal 2022-002296, the applicant, IKEA, was pursuing an application related to flat panel cardboard packaging. Claim 1 is provided below:

1. A flat panel cardboard packaging for protecting a flat panel, wherein the flat panel cardboard packaging comprises:
(a) a base part, first and second side walls extending along parallel first and second sides of the base part, at least a first lid part constructed for covering a flat panel placed on the base part between the side walls;
(b) a first cushioning part arranged along a third side of the base part, said third side being perpendicular to said first and second sides, wherein the first side wall is supported at a first angle, which is 10° to 60° to a plane which is perpendicular to the base part, to form a first side deformation zone, wherein the first cushioning part comprises an outer gable portion, which is connected to the third side of the base part, and an inner gable portion which is arranged at a free inner distance from the outer gable portion, thereby forming a rectangular cross-section end deformation zone between the outer and inner gable portions, wherein the first cushioning part comprises a gable connecting portion that connects the outer and inner gable portions to each other and holds them at the free inner distance from each other, wherein the first side wall is supported at the first angle by at least one of the inner gable portion, the outer gable portion, and the gable connecting portion of the first cushioning part;
(c) a second cushioning part arranged along a fourth side of the base part, said fourth side being perpendicular to said first and second sides, wherein the first side wall is supported at the first angle, which is 10° to 60° to the plane which is perpendicular to the base part, to form the first side deformation zone, wherein the second cushioning part comprises an outer gable portion, which is connected to the fourth side of the base part, and an inner gable portion which is arranged at a free inner distance from the outer gable portion of the second cushioning part, thereby forming a rectangular cross-section end deformation zone between the outer and inner gable portions of the second cushioning part, wherein the second cushioning part comprises a gable connecting portion that connects the outer and inner gable portions of the second cushioning part to each other and holds them at the free inner distance of the second cushioning part from each other, wherein the first side wall is supported at the first angle by at least one of the inner gable portion of the second cushioning part, the outer gable portion of the second cushioning part, and the gable connecting portion of the second cushioning part; and
(d) at least one of the first cushioning part and the second cushioning part includes an open end, and the first side wall is supported by the open end of the at least one of the first cushioning part and the second cushioning part.

The examiner relied on a combination of references, one teaching most of the elements but missing the angled sides of a triangular protection zone (and instead using a rectangular protection). Essentially, IKEA argued that the primary reference provided rectangular side on some sides of the package, and thus if one skilled in the art wanted to protect all sides, they would use the rectangular shape since that is what would be most obvious. This is in contrast to the examiner, who cited a secondary reference for the missing triangular side protection zones.

The PTAB pointed out the problem with IKEA’s argument:

Although we agree that the rectangular protectors placed on the sides of Gallistel’s package would have protected all sides of the packaging contents, Appellant’s argument ignores Rous’s teaching of using angled sides, with angled walls that fall within the claimed range of 10 to 60°, to also protect the sides. See Ans. 20–21 (explaining the same). Furthermore, we are not persuaded that it would have been preferable to include rectangular bumpers along the sides of Gallistel’s carton for side protection, and even if it was, “just because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012); see also Ans. 21 (explaining that “[o]ne possible solution does not make all others nonobvious”).

So, be careful not to fall into the trap of arguing that there is a more obvious combination than the one cited by the examiner. Even if it is true, that argument, without more, is easily brushed aside by the Board under In re Mouttet.