The law of obviousness has many facets. One is the teaching, suggestion, or motivation (TSM) test that can be used to evaluate the propriety of a prior art combination. The TSM test asks whether there is a teaching, suggestion or motivation to combine prior art references. If so, the invention is obvious (assuming the combination then teaches all of the claimed elements). The TSM test has even weathered Supreme Court scrutiny in KSR, where the Court rejected a rigid application of the TSM test, yet affirmed that the TSM test captures a helpful insight.

Most of the time the TSM inquiry focuses on finding an explicit teaching, suggestion, or motivation, to make the combination. There is, however, also the potential for an implicit teaching, suggestion, or motivation. While this might seem like an oxymoron, it is “well-settled” law (at least according to the PTAB) and used in numerous PTAB decisions in the following format:

It is well settled that an implicit motivation to combine exists when the improvement is technology-independent and the combination of references results in a product that is more desirable. DyStar Textilfarben GmbH & Co, v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). A person of ordinary skill in the art would readily envision that [performing whatever combination/modification is needed to reach the claimed elements] would be desirable at least in some applications. In situations where, as here, an implicit motivation to combine exists, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references. Id. Here, Appellant presents neither evidence nor persuasive technical reasoning that [making the combination/modification] requires more than ordinary skill or produces unexpected results.

This post reviews a recent PTAB decision (Appeal 2022-002390, Application 16/061,422) where the PTAB relied on an implicit motivation to combine.

In this example, the invention relates to a disposable sink liner. Claim 1 on appeal is reproduced below:

1. A disposable flexible container for installation in a sink, the sink comprises an upper opening and a bottom opening for draining, the container comprising:
an upper opening; and
a bottom opening that comprises a perforation that includes bored or punched multiple holes adapted for passing liquid to the sink bottom opening and for capturing at least part of a non-liquid garbage, wherein the container is dimensioned and shaped to fit the sink so that when the container is installed in the sink, the walls of the container are adjacent or attached, fully or partially, to the sides of the sink, wherein the container upper opening is fitted, fully or partially, to the sink upper opening, and wherein the container bottom opening is fitted, fully or partially, to the sink bottom opening.

The examiner relied on a primary reference focused on a food and kitchen preparation assembly (which included a liner for a sink and that included a container for enclosing garbage). The primary reference did not include a sink strainer because the primary reference provided an assembly that was meant to hold back food items that were being prepared. The examiner turned to a secondary reference and argued it would be obvious to add the strainer. The examiner’s stated reason to combine was that it would help further contain the food items and drain water, even though the primary reference already had a hole that accomplished this function. As discussed in previous posts, pointing out that the primary reference already solve the purported issue addressed by the second reference can be evidence that there is not sufficient motivation to combine.

The PTAB disagreed:

These arguments are not persuasive. The fact that the prior art may already perform adequately does not preclude a skilled artisan from seeking to improve upon it. See DyStar Textilfarben GmbH & Co. v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (explaining that the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical). An implicit motivation to combine exists when the improvement is technology-independent and the combination of references results in a product that is more desirable. Id. Here, a person of ordinary skill in the art would readily envision that using a strainer would filter the contents of the sink so as to prevent larger items of material from going down the drain. Such an artisan would readily perceive the desirability of using such a feature. In situations where, as here, an
implicit motivation to combine exists, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references. Id. Appellant presents neither evidence nor persuasive technical reasoning that arranging the elements in the manner claimed requires more than ordinary skill or produces unexpected results.

Notice the shifting burden - the prior art has no explicit motivation, but instead allegedly has an implicit motivation unless the applicant presents evidence to the contrary. This shift seems problematic given that the Office has the initial burden of persuasion and presenting evidence, and here the lack of such evidence is used by the Office as a basis to say the the applicant’s lack of evidence justifies its decision (which was based on implicit teachings). If only applicants were given so much flexibility, but as we know an applicant making arguments without evidence is dismissed out of hand as relying on “mere attorney argument.”

Alas - be cautious and look out for opportunities where the Office can rely on implicit motivation to combine, particularly where the primary reference already solves the issued purportedly addressed by the features of the secondary reference.