Motivation to Modify is a Cornerstone of Obviousness and Absent that the Board Reverses Obviousness Rejection

Ex parte Jones et al (Appeal 2010-011287, Serial no. 11/082,103) turned on obviousness of a claim directed to a method of creating a specialized alloy. There was a gap in the prior art relative to a limitation of applying two different particles to an alloy where one of he particles alters the alloy differently than the other. The Examiner nonetheless rejected the claims based on a theory of art recognition such that the cited art “teaches that many different properties may be altered by adding materials . . .It easily follows then that the same properties might be altered differently . . .”

The Board was not persuaded by the Examiner’s position because “the Examiner has failed to identify support for a finding that one of ordinary skill in the art would have been motivated to make such a modification. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (The “mere fact that the prior art may be modified in the manner suggested by the Examiner does not make the modification obvious unless the prior art suggested the desirability of the modification.”)