Preferability Not Required for Motivation to Combine

In In re Fulton and Huang (Fed. Cir. December 2, 2004) the Appellants argued that, in affirming an obviousness rejection, the Board failed to demonstrate that the characteristics disclosed in the cited reference were preferred over other alternatives disclosed in the prior art. The Court responded that its case law does not require that a particular combination must be the preferred, or the most desirable, or optimum
combination described in the prior art in order to provide motivation for the invention.

"[T]he question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination," not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available. Far from requiring that a disclosed combination be preferred in the prior art in order to be motivating, this court has held that "[a] known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." Thus, a finding that the prior art as a whole suggests the desirability of a particular combination need not be supported by a finding that the prior art suggests that the combination claimed by the patent applicant is the preferred, or most desirable, combination. The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed in the application.