Is it necessary for the prior art to suggest the same advantage or result discovered by the applicant?
No, it is not necessary for the prior art to suggest the same advantage or result discovered by the applicant to support an obviousness rejection. The MPEP clearly states, “It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.”
This principle is further elaborated in the case of In re Kahn, which states that “motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention.” This means that the motivation to combine references can come from addressing a different problem or achieving a different result than what the applicant intended.
Additionally, the MPEP cites Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., which emphasizes that “One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.” This further supports the idea that the prior art doesn’t need to identify the same specific advantage or result as the applicant’s invention to be relevant for an obviousness rejection.
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