What is the strongest rationale for combining references in an obviousness rejection?
The MPEP provides guidance on the strongest rationale for combining references in an obviousness rejection. It states, “The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination.”
This means that the most compelling reason to combine references is when there is evidence or a logical argument that the combination would lead to an improvement or beneficial outcome. This can be based on explicit statements in the prior art, implicit suggestions, or reasoning derived from scientific principles or legal precedent.
The MPEP further elaborates on this concept by citing the Dystar Textilfarben case, which states that an implicit motivation to combine can exist “when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.” This highlights that the motivation to combine can be based on common-sense improvements that would be obvious to those skilled in the art.
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