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« Medytox, Inc. v. Galderma S.A. (Fed. Cir. 2023) | Main | CVC Appeals PTAB Decision in CRISPR Interference »

July 11, 2023


Something about this analysis seems off. CAFC seems to be saying that the Board wrongly imposed a further requirement on the motivation to combine that was present in the references but not in the actual claims. And this error led the Board to reject the proffered motivation to combine by concluding that the spurious requirement was NOT met.

But in a hypothetical situation where the motivation to combine DOES meet such unnecessary requirements present only in the references, then it would still be valid for a broader claim that lacks those requirements, wouldn't it? Of course, an examiner in that situation is doing needless work to come up with an overly narrow motivation, but a narrow motivation would still be good for a broad claim, I think.

Maybe I'm missing something though.

“This is especially true in the software arts, where many examiners implicitly take the position that it would be obvious to combine any two or more preexisting software features just because those features could (in theory) be combined... There is also a slightly higher burden to establish the obviousness of claims in unpredictable arts, such as chemistry.”

I do not know that this really is “especially” true in the software arts relative to the AU 1600s. Tool around in some AU 16XX office actions and look for mentions of In re Kerkhoven, 626 F.2d 846 (C.C.P.A. 1980). You will see that chem & pharma examiners feel quite free to combine essentially any known prior art elements, just as you describe for software examiners.

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