How does the “proposed modification cannot change the principle of operation” affect obviousness determinations?
How does the “proposed modification cannot change the principle of operation” affect obviousness determinations?
This principle is a critical consideration in assessing the obviousness of a claimed invention. According to MPEP 2143.01(VI):
“If the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious.”
This means that when considering combinations or modifications of prior art to reject a claim as obvious, the examiner must ensure that the proposed changes do not fundamentally alter how the original reference operates. If the modification would require a substantial reconstruction and redesign of the elements or a change in the basic principle under which the original reference was designed to operate, then the combination is likely not obvious.
Key aspects to consider:
- Understand the fundamental principle of operation of the prior art
- Assess whether the proposed modification maintains this principle
- If the principle changes significantly, it weighs against obviousness
- This can be a powerful argument against an obviousness rejection
Examiners should provide a clear explanation of how the proposed modification or combination maintains the original principle of operation. Applicants can use this principle to argue against obviousness by demonstrating how a proposed combination would fundamentally change how the reference operates.
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