For the purposes of establishing obviousness under 35 U.S.C. § 103, there can generally be no motivation to modify a prior art device in a manner that is inconsistent with the prior art’s stated goals. Here, for example, no motivation was found to add complexity to a prior art hair trimmer that was specifically designed to “hav[e] relatively few components.” “Such a modification is inconsistent with [the prior art’s] stated goal.” This would be a good case to consult and cite in response to an examiner’s proposed modification that is contrary to the prior art’s intended purpose.
Background / Facts: The patent on appeal here from inter partes review proceedings at the PTO is directed to a manner of mounting a motor in the housing of a string trimmer. The prior art discloses an electric-powered hair trimmer with a more simplified mounting suitable for the less robust hair trimmer market.
Issue(s): Whether it would have been obvious to scale-up the prior art’s mounting plate assembly to arrive at the claimed invention.
Holding(s): No. “[T]he proposed modification to [the prior art] device seems to run counter to the intended purpose of [the prior art] design. The Board stated that ‘[a] person of ordinary skill would have known, for example, that plate 45 could have been fixedly secured to motor 25 using bolts or screws instead of spring grade wire.’ [] Yet, [the prior art] hair trimmer was designed to improve on prior art units that had ‘relatively high costs and complex constructions which make assembly, repair and cleaning difficult.’ [] [The prior art] therefore disclosed ‘an easily manipulated, efficient, quiet, hair trimmer having relatively few components that is particularly well-adapted for self-use.’ [] Replacing [the prior art] yoke with bolts or screws, as the Board suggests, would increase the number of components necessary to mount the motor and, thereby, increase assembly and repair costs. Such a modification is inconsistent with [the prior art’s] stated goal.”