The Challenge: Patent examiners often reject claims for lack of inventive step using the argument: "A person skilled in the art (PSA) would have been motivated to combine feature X from reference Y to meet practical needs."
Case: Patent CN202110815028.0 (Power Extraction System for Three-Core Cables)
· Examiner's Rejection (Based on Ref 4 - CN203151236U):
o Ref 4 disclosed extracting power from a cable's metallic sheath carrying existing AC current (>10A).
o The key difference was the applicant's active power injection device (DC source -> inverter -> coupler) that injects AC current into the sheath-earth loop.
o The examiner argued Ref 3 (CN203951382U) taught such an inverter device. Therefore, the PSA would be motivated to add this device to Ref 4's system to inject current, "as needed".
Successful Rebuttal Strategy:
1. Focus on the Core Problem: The patent solved a specific problem: powering sensors on three-core cables. In these cables, the three phase currents cancel out at the sheath, making passive induction (like Ref 4) impossible. Ref 4's scenario (sheath with inherent current) actually mirrored the single-core cable case mentioned in the background, where injection is unnecessary.
2. Attack the "Motivation" Premise: Crucially, Ref 4's sheath already had sufficient AC current. The PSA would have no reason or motivation to add a complex device to inject more current – it solved no problem in Ref 4's context. The "practical need" asserted by the examiner was invalid.
3. Break the Technical Hint Chain: With no motivation to modify Ref 4 by adding current injection, the suggestion to use Ref 3's inverter lacked any technical basis or "teaching, suggestion, or motivation" (TSM).
4. Strengthen the Claims: Claims were amended to explicitly:
o Define the three-core cable structure (three cores + outer sheath).
o Detail the power injection device and its method.
o This sharply distinguished the invention's application (sheath without inherent current) from Ref 4's scenario (sheath with inherent current).
Key Takeaway: To counter "motivation to combine" rejections:
1. Pinpoint the Technical Problem: Does the cited prior art (Ref 4) actually face the problem your invention solves?
2. Challenge the Need: If the prior art works adequately (e.g., sheath has current), why would the PSA be motivated to add your feature? Prove no motivation exists.
3. Clarify the Context: Amend claims to explicitly define the problematic scenario your invention addresses.
4. State "No Motivation" Clearly: Directly argue the PSA lacks motivation to combine the references as suggested.
Result: By demonstrating the cited art had no need for the claimed solution, the "motivation" objection was overcome, securing patent grant.
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