An updated version of the Manual of Patent Examining Procedure (MPEP) was published in January 2018 and does make one noteworthy change regarding MPEP §2143.01V titled “The Proposed Modification Cannot Change the Principle of Operation of a Reference.” This section has long stated that, “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. In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir.1984)” The January 2018 publication provides two cases that temper the application of this rule: In re Urbanski, 809 F.3d 1237, 1244, 117USPQ2d 1499, 1504 (Fed. Cir. 2016) and Allied
Erecting v. Genesis Attachments, 825 F.3d 1373,1381, 119 USPQ2d 1132, 1138 (Fed. Cir. 2016).
About 50 ex parte PTAB appeals cite In re Urbanski. Many of those cites include the following quote:
One of ordinary skill in the art may be motivated to pursue the desirable properties taught by one reference, even if that means foregoing the benefit taught by another reference. In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016). See also WinnerInt’lRoyalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”)
Allied Erecting has only been cited about a dozen times in ex parte PTAB appeals, mostly for the following proposition:
[I]n Allied Erecting v. Genesis Attachments, 825 F.3d 1373,1381, 119 USPQ2d 1132, 1138 (Fed. Cir. 2016), the court stated “[a]lthough modification of the movable blades may impede the quick change functionality disclosed by Caterpillar, ‘[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine’” (quoting Medichem, S.A.v. Rolabo, S.L., 437 F.3d 1157, 1165, 77 USPQ2d1865, 1870 (Fed Cir. 2006) (citation omitted)).