Legal Definitions - exhausted-combination rejection

An exhausted-combination rejection occurs in patent law when a patent examiner refuses a patent claim because it combines several existing, known elements, but the combination itself does not produce a new, unexpected, or non-obvious result. Essentially, the combination merely performs the sum of the functions of its individual parts, and the way these parts interact is already understood or would be obvious to someone skilled in the relevant field. The examiner concludes that the inventive potential of combining these specific elements has been "exhausted" because the resulting combination offers no new technical contribution beyond what was already known.

Here are some examples to illustrate this concept:

• Example 1: Integrated Pen and Stylus

  Imagine a company applies for a patent on a new writing instrument that combines a standard ballpoint pen at one end with a capacitive stylus for touchscreens at the other. The patent examiner might issue an exhausted-combination rejection. Both ballpoint pens and capacitive styluses are well-known, existing technologies. Combining them into a single device simply provides the function of a pen and the function of a stylus in one convenient package. There is no new, unexpected interaction or result from putting these two elements together; the pen doesn't write better because it's combined with a stylus, nor does the stylus become more accurate. The combination merely offers the sum of the individual, known functions.

• Example 2: Social Media App with Built-in Messaging

  Consider a software developer seeking a patent for a novel social media application that allows users to post public updates and also send private messages to each other within the same application. A patent examiner could issue an exhausted-combination rejection. Social media platforms for public sharing are widely known, and private messaging applications are also a common and established technology. Integrating these two existing functionalities into a single app, while convenient, does not create a new or unexpected technical synergy. The combination simply bundles two already understood features without producing a novel technical advantage beyond what each component already offers.

• Example 3: Bicycle with an Attached Cup Holder

  Suppose an inventor seeks a patent for a new bicycle design that includes a permanently attached cup holder integrated into the handlebars. The patent office might issue an exhausted-combination rejection. Bicycles are a well-known mode of transportation, and cup holders are a common accessory for holding beverages. Attaching a cup holder to a bicycle frame simply adds the function of holding a cup to the function of riding a bicycle. This combination does not make the bicycle perform better, safer, or in a fundamentally new way, nor does it enhance the cup holder's function. It is an obvious combination of two existing elements without an unexpected or non-obvious result.