Why “No Motivation to Combine” Often Fails as a Standalone §103 Argument

When an examiner uses one reference for the system framework and another to supply a missing mechanism, applicants often answer: “There was no motivation to combine them.” That can be a valid argument, but it is rarely persuasive as a slogan. The better question is whether the examiner’s proposed path from the references to the claimed invention is actually supported, technically coherent, and legally complete.

The Familiar Two-Reference Pattern

A common §103 rejection looks simple on paper. Reference A discloses most of the claimed system. Reference B discloses the missing mechanism, module, or movement. The examiner says a skilled person would have modified A using B and therefore the claim would have been obvious.

The original CrossVision IP article discussed a 2026 Federal Circuit appeal, In re Zhengxu He, involving an automated kitchen system. The examiner relied on Buehler for much of the kitchen architecture and used another He patent to supply features relating to unloading and a transport vehicle. By the time the case reached the Federal Circuit, the applicant’s principal attack focused on motivation to combine rather than an unresolved claim-limitation gap.

The Federal Circuit affirmed in a nonprecedential decision on June 9, 2026. The case is useful not because it created a new obviousness rule, but because it illustrates why a generic “no motivation” argument can fail when the record already supplies a workable rationale.

KSR Does Not Require an Express Teaching to Combine

After KSR v. Teleflex, obviousness analysis is not confined to an explicit teaching, suggestion, or motivation printed in the prior-art documents. USPTO guidance recognizes several rationales, including predictable combinations, substitution of known elements, use of known techniques, obvious-to-try reasoning, design incentives, market forces, and express or implicit reasons to combine.

That flexibility does not eliminate the examiner’s burden. MPEP §§2142 and 2143 continue to require articulated reasoning that connects factual findings to the legal conclusion of obviousness. A conclusory statement that “it would have been obvious to combine” is not enough merely because KSR rejected a rigid TSM test.

The issue is not whether a reason can be imagined

The prosecution question is whether the stated reason is supported by the references, the knowledge of the skilled person, the problem being solved, and a technically credible path to the claimed combination.

“Could Combine” and “Would Have Had Reason to Combine” Are Different

An examiner may show that two technologies are physically capable of being used together. That does not automatically establish why a skilled person would have selected the particular modification that produces the claim. A stronger response therefore tests the examiner’s stated objective.

What problem in A would lead the skilled person to B? Does B solve that problem in the relevant operating environment? Does the proposed modification preserve A’s intended function? Does the examiner rely on a benefit that B actually teaches, or only on a benefit identified after reading the applicant’s disclosure?

These questions make the motivation argument concrete. They move the response away from the bare assertion “there is no motivation” and toward a record-based explanation of why the examiner’s rationale lacks a factual bridge.

Do Not Make “Bodily Incorporation” the Test

Another common response says that a component from B cannot be physically inserted into A without interference. That may identify a real technical incompatibility, but the legal framing matters. Obviousness does not generally require that the secondary reference be copied bodily into the primary reference.

The original article highlighted the In re Keller principle reflected in In re He: the question is what the combined teachings would have suggested to a skilled person, not whether every part of B can be transplanted unchanged into A. A skilled person is ordinarily credited with ordinary creativity and the ability to make routine adaptations.

Therefore, if incompatibility is the point, explain why the adaptation would not be routine. Show that the feature is deeply dependent on B’s architecture, that A relies on an inconsistent operating principle, that the modification would defeat A’s intended purpose, or that the references provide no reasonable technical path to reconcile the systems.

Motivation Is Only One Part of the Combination Analysis

Even when a reason to try a combination exists, the analysis may still fail if the record does not support a reasonable expectation of success. This is particularly important in unpredictable technologies, but it can also matter in mechanical, electrical, and software systems when integration changes operating constraints in nonroutine ways.

The applicant should ask whether the examiner has established both the reason to make the modification and a credible expectation that the modified system would perform the claimed function. A desire for an outcome does not always establish that a skilled person would reasonably expect the proposed implementation to achieve it.

Look for Teaching Away and Intended-Purpose Problems

Prior art can weaken a proposed combination when it discourages the direction the examiner proposes. Teaching away is not established merely because a reference prefers a different embodiment; the evidence should show that the skilled person would have been discouraged from the claimed path.

Similarly, MPEP guidance recognizes that a modification rendering the primary reference unsatisfactory for its intended purpose may undermine the proposed rationale. This argument is strongest when tied to the reference’s own stated objective, workflow, geometry, timing, or control relationship—not simply to the applicant’s preference for preserving the primary reference exactly as drawn.

Sometimes the Better §103 Argument Is Still a Missing Limitation

Before spending most of a response on motivation, reconstruct the claim chart from scratch. Examiners sometimes characterize a feature broadly, combine passages that do not disclose the claimed relationship, or treat a result as though it were the claimed mechanism. If the references still do not teach a required limitation after the proposed combination, that can be a cleaner argument than debating why a skilled person would combine them.

This is especially important when the missing feature defines the commercial point of the invention. A focused amendment anchored in the original disclosure may preserve a meaningful distinction more reliably than a generalized attack on motivation.

A Stronger Response Framework

Map the claim first. Confirm whether A and B actually disclose every limitation and claimed relationship.
Identify the examiner’s exact rationale. Do not rebut a motivation the examiner never relied on.
Test the stated problem and benefit. Ask whether the record supports the reason for the modification.
Analyze technical compatibility. Explain why any required adaptation would be nonroutine or would defeat the primary reference’s purpose.
Address reasonable expectation of success. Motivation to attempt is not necessarily expectation of success.
Use teaching-away evidence where it actually exists.
Consider amendment strategically. If the claim’s commercially valuable distinction is supportable and the record against the existing wording is strong, a targeted amendment may be better than a weak standalone argument.

Takeaway

“No motivation to combine” is not obsolete. It is simply incomplete when it is not tied to the examiner’s actual reasoning and the technical record. KSR gave obviousness analysis flexibility, but it did not authorize unexplained combinations.

The best §103 response examines the whole bridge from prior-art facts to the claimed invention: missing limitations, the reason for modification, compatibility, expected success, contrary teaching, and—when appropriate—the scope of a targeted amendment.