What is the significance of “proposed modification cannot render the prior art unsatisfactory for its intended purpose”?
What is the significance of “proposed modification cannot render the prior art unsatisfactory for its intended purpose”?
This principle is crucial in evaluating the obviousness of a claimed invention. According to MPEP 2143.01(V):
“If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification.”
This means that when considering whether to combine or modify prior art references to reject a claim as obvious, the examiner must ensure that the proposed changes do not undermine the fundamental purpose or functionality of the original reference. If the modification would make the prior art inoperable or unsuitable for its primary intended use, then the motivation to combine is likely lacking.
Key points to consider:
- The intended purpose of the prior art must be clearly understood
- The impact of the proposed modification on that purpose must be carefully evaluated
- If the modification renders the prior art unsuitable, it weighs against obviousness
- This principle can be a strong argument against an obviousness rejection
Examiners should provide a detailed explanation of how the proposed modification maintains or enhances the prior art’s functionality. Conversely, applicants can use this principle to argue against obviousness by demonstrating how a proposed combination would render a reference unsatisfactory for its intended purpose.
To learn more: